Obviousness By Combination Of References Is Not Undermined By Inventor's Declarations To The Contrary

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.

"Obviousness does not require absolute predictability of success . . . all that is required is a reasonable expectation of success." Slip op. at 8 (alteration in original) (quoting In re Kubin, 561 F.3d 1351, 1360 (Fed. Cir. 2009)).

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...