Wednesday, November 13, 2013

In re Deuel case brief

In re Deuel case brief summary
51 F.3d 1552 (1995)

Applicants appealed from a decision of the United States Patent and Trademark Office Board of Patent Appeals and Interferences that affirmed a rejection of applicants' patent application for a process of isolating and making DNA molecules.

Applicants sought a patent for their process of isolating and manufacturing specific DNA molecules. The examiner rejected their application.


  • The Board of Patent Appeals (Board) affirmed. 
  • Applicants appealed, and the court reversed. 
  • The court held the Board erred by rejecting the application under the obviousness standard at 35 U.S.C.S. § 103. 
  • The court agreed with applicants that the Board mistakenly found that the prior art suggested isolating and making the molecules specified in the application and thus were obvious.
  • Rather, the prior art did not disclose the specified molecules; it would have been highly unlikely for one of ordinary skill and art in the field to achieve, based on common teaching, what was achieved by applicants. 
  • The fact that there was some similarity in the structure of applicant's molecules and those disclosed by prior art did not render applicants' molecules obvious.


The decision was reversed on the grounds that the Board of Patent Appeals erred by finding applicants' process obvious. Prior art did not disclose the molecules described in applicants' patent application.

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