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ARTICLE · 15 NOVEMBER 2012

Inventions In Unpredictable Fields -- Not Always Unobvious

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On Sept. 21, 2012, a three-judge panel of the Federal Circuit in In re Droge (2011-1600) held that the claims in U.S. patent application serial no. 10/082,772 were unpatentable for obviousness.

United StatesIntellectual Property
Barry Wilson
Barry Wilson
Anthony Kuhlmann
Anthony Kuhlmann
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On Sept. 21, 2012, a three-judge panel of the Federal Circuit in In re Droge (2011-1600) held that the claims in U.S. patent application serial no. 10/082,772 (the '772 application"), directed to a method of recombining DNA in eukaryotic cells, were unpatentable for obviousness. The Federal Circuit affirmed the decision of the Board of Patent Appeals and Interferences, affirming the patent examiner's rejection for obviousness despite an expert opinion from the applicant that the prior art failed to provide an expectation of success in the claimed combination.

The declaration failed to specifically rebut the examiner's allegations and support from the scientific literature by using either scientific reasoning or by citation to contrary scientific literature or data. The field of biotechnology is viewed by the U.S. Patent and Trademark Office as generally unpredictable and biotechnology inventions are often found to be nonobvious because of this general

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