Ex Parte Kubin: Board of Patent Appeals and Interferences Applies 'Obvious to Try' in Post-KSR Biotechnology Appeal

For the past 15 years, the PTO has been issuing patents based on its interpretation of Federal Circuit precedent that a previously unknown DNA sequence that encodes a known polypeptide is non-obvious. This precedent, established by the Court of Appeals for the Federal Circuit in In re Bell, 991 F.2d 781, 26 U.S.P.Q.2d 1529 (Fed. Cir. 1993), and later reaffirmed in In re Deuel, 51 F.3d 1552, 34 U.S.P.Q.2d 1210 (Fed. Cir. 1995), is now being challenged by the Patent Office Board of Patent Appeals and Interferences (the “Board”). In Ex Parte Kubin, 2007 WL 2070495 (B.P.A.I. May 31, 2007), the Board determined that a DNA sequence encoding a functionally characterized but un-isolated receptor protein was “the product not of innovation but of ordinary skill and common sense,” leading it to conclude that the DNA sequence was obvious under 35 U.S.C. '103(a) and therefore not patentable.