Just because the group of obvious variants may be large does not make the use of any [one] any less obvious.

Ex parte JACQUES DEGELAEN et al. (BPAI)

Appeal 2008-5883 

Application 10/702,507 

Technology Center 1600 

Decided: February 25, 2009 

The claim at issue was an assay kit for detecting one or more antibiotics containing a β-lactam ring in a liquid dairy product.  The prior taught a similar assay but with a different receptor for recognizing the antibiotic.  The Examiner found the claim to be obvious.  The Board affirmed.  The applicant argued that there were a large number of bacterial receptors to choose from and no guidance to pick the one they chose and there was no expectation of success.  The Board disagreed and sided with the Examiner.  The Board stated:

"We recognize that there are a large number of bacteria from which beta-lactam receptors may be obtained, but just because the group of obvious variants may be large does not make the use of any specific-binding protein for a beta-lactam antibiotic any less obvious."

With regards to the expectation of success the Board stated that the applicant had not provided any scientific or other evidence to show that there would not have been a reasonable expectation of success. The Board once again reiterated that arguments of counsel are not sufficient.  

Case can be found here