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Obviousness by Combination of References Is Not Undermined by Inventor’s Declarations to the Contrary

September 21, 2012

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Last Month at the Federal Circuit - October 2012

Judges: Newman, Moore (author), O'Malley

[Appealed from: Board]

In In re Droge, No. 11-1600 (Fed. Cir. Sept. 21, 2012), the Federal Circuit affirmed the Board’s decision rejecting an independent claim of U.S. Patent Application No. 10/082,772 (“the ’772 application”) as obvious over the prior art.

Assigned to Peter Droge, Nicole Christ, and Elke Lorbach (collectively “Droge”), the ’772 application is directed to recombining DNA in eukaryotic cells through various methods and combinations. This is accomplished by using a special virus containing a protein that facilitates the sequence-specific recombination of DNA at a predetermined location on the target cell’s DNA. The ’772 application teaches this method by use of modified integrases Int-h and Int-h/218 instead of naturally occurring (wild-type) integrases, as previously used.

During examination, the PTO rejected the independent claim as obvious over two prior art references. Specifically, the examiner cited a prior patent that taught the use of wild-type integrases and an article written by two of the inventors of the ’772 application. Droge appealed to the Board, arguing that the claim was not obvious because a person of ordinary skill in the art would not have had a reasonable expectation of success in using the wild form of the virus to induce recombination in eukaryotic cells. Applying the teaching of the prior art to the claim, the Board found that it would have been obvious over the combination of the references.

On appeal, the Federal Circuit faced the issue of whether there was a reasonable expectation of success sufficient to combine the teachings in the two references. According to Droge, although the use of modified integrases had been shown to facilitate recombination in prokaryotic cells, a person reasonably skilled in the art would not expect the same result in eukaryotic cells. Droge also argued that the article reference taught away from the claimed invention and the Board erred in holding otherwise. Additionally, Droge relied on a declaration from one of the inventors, concluding that a person skilled in the art would not expect success from the combination of the references because it was unclear at the time of invention whether that combination would work.

In response to Droge’s argument, the Court first noted that the patent reference revealed that wild-type Int can induce DNA recombination in both eukaryotic and prokaryotic cells. The Court then agreed that the patent reference did not teach the use of the modified integrases Int-h and Int-h/218 as claimed in the ’772 application. However, the Court found that the article written by two of the inventors did teach this element and provided the motivation for doing so in the manner prescribed in the rejected claim. Specifically, the Court held that “[t]he article directly contradicts the assertion in the Droge Declaration that a skilled artisan would not expect the modified integrases Int-h and Int-h/218 to work in eukaryotic cells based on the three-dimensional structure of DNA in those cells.” Slip op. at 7.

Therefore, the Court found that the method in the rejected claim would have been obvious to a person skilled in the art. The Court affirmed the Board’s decision that the ’772 application was obvious over the prior art and found no merit in all remaining arguments.

Summary authored by Steven C. Rushing, law clerk at Finnegan.