Trilateral Project 24.1-Biotechnology 189

Obviousness is a very fact-dependent determination which must be made in every application, based on the facts of that case and the state of the prior art at the time of filing. There have been two recent cases from the U. S. Court of Appeals for the Federal Circuit in which the DNA was found to be patentable over prior art showing the protein or a partial protein sequence, In re Bell, 991 F.2d 781, 26 USPQ2d 1529 (Fed. Cir. 1993), and In re Deuel, 51 F.3d 1552, 34 USPQ2d 1210 (Fed. Cir. 1995). These decisions, however, do not represent a per se rule regarding the patentability of DNA over prior art disclosing the protein. No per se rules of obviousness exist, and each application must be examined with a fact-specific analysis of the claims presented compared to the prior art, In re Ochiai, 71 F.3d 1565, 1572, 37 USPQ2d 1127, 1133 (Fed. Cir. 1995).