In re Kubin - 561 F.3d 1351 (Fed. Cir. 2009)

Rule:

Obviousness is a question of law based on underlying findings of fact. An analysis of obviousness must be based on several factual inquiries: (1) the scope and content of the prior art; (2) the differences between the prior art and the claims at issue; (3) the level of ordinary skill in the art at the time the invention was made; and (4) objective evidence of nonobviousness, if any. The teachings of a prior art reference are underlying factual questions in the obviousness inquiry.

Facts:

Appellants Marek Kubin and Raymond Goodwin applied for a patent before the Board of Patent Appeals and Interferences (the “Board”) claiming DNA molecules encoding a protein known as the Natural Killer Cell Activation Inducing Ligand (“NAIL”). The specification of the claimed invention recited an amino acid sequence of a NAIL polypeptide. The invention further isolated and sequenced a polynucleotide that encoded a NAIL polypeptide. Moreover, the inventors trumpeted their alleged discovery of a binding relationship between NAIL and a protein known as CD48. The Board rejected appellants’ claims as invalid as obvious under 35 U.S.C. § 103(a) and invalid under 35 U.S.C. § 112. With regard to the § 112 rejection, the Board found the genus of nucleic acids of representative claim 73 unsupported by an adequate written description.  Regarding obviousness, the Board rejected appellants’ claims over the combined teachings of U.S. Patent No. 5,688,690 ("Valiante") and 2 Joseph Sambrook et al., Molecular Cloning: A Laboratory Manual 43-84 (2d ed. 1989) ("Sambrook"). The Board found as a factual matter that appellants used conventional techniques such as those outlined in Sambrook to isolate and sequence the gene that coded for NAIL. The Board also found that appellants’ claimed DNA sequence was isolated from a cDNA library using the commercial monoclonal antibody C1.7 disclosed by Valiante. Appellants challenged the decision of the Board.

Issue:

Were the appellants’ claims patentable, thereby leading to the conclusion that the Board erred in refusing to accept the same?

Answer:

No.

Conclusion:

The court found that the Board had substantial evidence to conclude that appellants used conventional techniques, as taught in Valiante and Sambrook, to isolate a gene sequence for NAIL. Substantial evidence supported the Board's conclusion that Matthew reinforced the relative ease of deriving the claimed sequence following the teachings of the prior art. The instant case also required the court to consider the Board's application of the court's early assessment of obviousness in the context of classical biotechnological inventions. The record showed that a skilled artisan would have had a resoundingly reasonable expectation of success in deriving the claimed invention in light of the teachings of the prior art. The Board did not err in finding appellants' claims obvious, 35 U.S.C.S. § 103, as a matter of law.