This was a fairly fact specific analysis, but I think one takeaway of note is that an inventor’s own declaration is usually given less weight than that of a more neutral party. It is also another cautionary tale about how an inventor’s own work can be used against him, which will be even more tricky to navigate going forward with the new disclosure rules.
Background / Facts: The application on appeal here from the BPAI is directed to recombining DNA in a eukaryotic cell (i.e., a cell with a nucleus), such as a human cell. (The term “recombinant DNA” generally refers to DNA from one or more sources with a sequence that does not occur in nature.) The claims were rejected as obviousness in view of an earlier article by two of the three inventors, in combination with another reference. Droge does not dispute that the references, taken together, teach every limitation of the claims. Instead, Droge argues that a person of ordinary skill in the art would not have had a reasonable expectation of success in combining the teachings of these references, and indeed submitted a declaration (from one of the inventors) setting out reasons why their earlier article’s disclosure of using the modified integrase proteins Int-h and Int-h/218 to facilitate recombination in prokaryotic cells would not lead a skilled artisan to expect that these integrases would also work in eukaryotic cells.
Issue(s): Whether a person of ordinary skill in the art would have had a reasonable expectation of success in using “Int-h” and “Int-h/218” to induce recombination in eukaryotic cells.
Holding(s): Yes. “Obviousness does not require absolute predictability of success … all that is required is a reasonable expectation of success.” Despite the inventor declaration casting doubt on whether there was a reasonable expectation of success, the court appeared to put more stock in another article that it said refuted the assertions in the declaration. That article states that Int-h recombines DNA “identically” regardless of whether its three-dimensional structure is supercoiled (as in prokaryotic cells) or topologically relaxed (as in eukaryotic cells). A pretty strong assertion, but one that the court took seriously.