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September 21, 2012


Obzilla reaps another victim. Peter Droge and his cohorts thought they invented a DNA recombination technique. But a combination of a prior art patent and an article by two of the three applicants made the technique obvious, the patent board ruled, to which a CAFC panel agreed (CAFC 2011-1600). There was no argument over the evidence prima facie, only about what was reasonable. The inventors argued that similar work in prokaryotic cells "would not lead a skilled artisan to expect" the same result in eukaryotic cells. This argument was solidly backed by the prior art prokaryote workers teaching away: the relevant protein co-factors are present in prokaryotic cells, but not eukaryotic cells. But the CAFC is beyond reason in applying hindsight, and in backing the PTO if "a reasonable mind might accept as adequate to support a conclusion." In other words, facts just don't matter that much. To the CAFC and the USPTO nowadays, science is merely a matter of opinion. "'Obviousness does not require absolute predictability of success... all that is required is a reasonable expectation of success. In re Kubin, 561 F.3d 1351, 1360 (Fed. Cir. 2009) (citing In re O'Farrell, 853 F.2d 894, 903-04 (Fed. Cir. 1988))." Case-by-case subjectivity is now called rule of law.

Posted by Patent Hawk at September 21, 2012 10:02 PM | Prior Art