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74 J. Pat. & Trademark Off. Soc'y 750 (1992)
Patenting DNA - Obviousness Rejections

handle is hein.journals/jpatos74 and id is 776 raw text is: Patenting DNA- Obviousness Rejections* Karl Bozicevic** INTRODUCTION T he basic premise of this article is that all technologies should be L Judged by the same legal standards on the issue of obviousness,1 and that in particular DNA should not be singled out, apart from other compounds, when determining its patentability over known DNA compounds. A DNA sequence is not merely a sequence of letters representing nucleotides linked together in a chain. DNA sequences are chemical compounds which, like other compounds, have prop- erties and characteristics beyond acting as information transfer ve- hicles. Guidelines exist for determining the obviousness2 of one claimed compound over other known compounds. Initially, the structure of the claimed compound is compared with the structure of known com- pounds to determine if the claimed compounds are prima facie3 ob- vious in view of the structure of known compounds. If prima facie structural obviousness is found, one must consider the properties of the compounds since it is the compound as a whole with all of its properties and characteristics' that is to be patented and not merely *Dedicated to the memory of Eugene F. Malin 1936-1990 **B.S. Chemistry; J.D.; LL.M. admitted FL, DC, OH, CA USPTO. (Morrison & Foerster, San Francisco, CA) The views expressed are solely those of the author. 1 The standard of obviousness under 35 USC §103 does not differ with the technology. This is well-established rule that is firmly embedded in precedent. The problem of obviousness under Section 103 in determining the patentability of new and useful chemical compounds, or, as it is sometimes called, the problem of chemical obviousness, is not really a problem in chemistry or pharmacology or in any other related field of science such as biology, biochemistry, pharmaco- dynamics, ecology, or others yet to be conceived. It is a problem of patent law. In re Papesch, 137 USPQ 43, 47 (CCPA 1963) (emphasis original). The Federal Circuit has adhered to Papesch and has reiterated that obviousness determinations are made irrespective of the technology. The problem of obviousness considered by the Patent and Trademark Office, and to which we address ourselves here, arises under Section 103 of the Patent Act. It is a problem of patent law and not of chemistry. Thus, the requirement of unobviousness in the case of chemical inventions is the same as for other types of inventions. In re Johnson, 223 USPQ 1260, 1263 (Fed. Cir. 1984) (citing In re Papesch, 137 USPQ 43, 47 (CCPA 1963)). 2 35 U.S.C. §103 as interpreted by Graham v. John Deere, 148 USPO 459 (1966). 3 Obvious on its face. See In re Warner et aL, 154 USPO 173 (CCPA 1967). 4 In re Papesch, 137 USPQ 43 (CCPA 1963).