Appeal No. 1996-0729
Application No. 07/859,572
Appellants admit that 2', 5' - dideoxyadenosine is known to inhibit adenylate cyclase (brief, page 11).
Appellants argue (a) that none of the cited references disclose or suggest that inhibiting the PKA/cAMP
pathway would counteract a major effect of cellular contact with HIV/HIV components and (b) that the
examiner has failed to provide any motivation to combine the references (brief, page 12).
To establish a prima facie case of obviousness, there must be both some suggestion or
motivation to modify the references or combine reference teachings and a reasonable expectation of
success. Furthermore, the prior art must teach or suggest all the claim limitations. In re Vaeck, 947
F.2d 488, 493, 20 USPQ2d 1438, 1442 (Fed. Cir. 1991).
Here, we agree with appellants that the examiner has not established that one of ordinary skill in
the art would have reasonably expected 2', 3' - dideoxynucleosides and 2', 5' - dideoxyadenosine to
possess common biological activities so as suggest using a known adenylate cyclase inhibitor as an
antiviral agent or vice versa. We also agree with appellants that the examiner has failed to provide a
reason or motivation to combine the primary references with Legrand II. While Legrand II discloses
inhibiting adenylate cyclase with 2', 5' - dideoxyadenosine, that is not the claimed invention. We find
that the only incentive to use 2', 5' - dideoxyadenosine to prevent or reverse the functional deficiency
induced in lymphoid cells during HIV infection or by exposure to HIV components or to treat a subject
infected with HIV in this case is provided by appellants’ disclosure.
Accordingly, we reverse the rejection of claims 1 and 12 through 14 under 35 U.S.C.
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