This case is related to re-combinations of DNA sequences that do not occur in nature, where a protein is used to enable the recombination. The claimed method of the defendant used a modified version of a naturally occurring “wild-type” protein to enable the recombination. The board held that the method as claimed by the defendant was obvious.
The defendant did not dispute that the cited references disclose each and every limitation as recited by the claims, but did argue that a skilled artisan would not have a reasonable expectation that he would succeed in the combining the references. Specifically, the defendant argued that someone skilled in the art would not have a reasonable expectation that the modified proteins would facilitate the recombination in a mammalian or eukaryotic cell because prokaryotic cells (cells with no nucleus) promote the DNA recombination due to features of prokaryotic cells.
The board upheld the ruling that substantial evidence supports Board’s determination that a person of ordinary skill in the art would have had a reasonable expectation of success. The board relied on an article published by the defendants that stated that even in the absence of certain protein co-factors which assist with recombination, such as a host factor that is present in prokaryotic but not in eukaryotic cells. The board further relied on another article providing evidence that the DNA recombination without the host factor.
PATENT ATTORNEY TAKEAWAYS:
1) It is very hard to win a case on a non-obvious to combine argument, even in a granted patent.
2) Before drafting an application, it may be helpful to review the inventor’s prior works on the subject matter to determine if he has publically disclosed any literature that may be harmful to your case in the future.