Appeal No. 1996-2756
Application No. 07/987,235
will contribute to anti-message inhibition. Therefore, the examiner concludes (id.)
that:
given the teachings of the cited prior art the ordinary artisan at the
time of the instant invention would have been provided a reasonable
expectation of success in making an antisense RNA molecule and a
nucleic acid molecule to which selectively inhibits the K-ras oncogene,
where the antisense oligonucleotides comprising oligonucleotides to
exons II and III, and intron II of the p21 K-ras oncogene.
In response to the examiner’s rejection, appellants argue (Brief, page 5) that
the cited references fail to suggest the recited intronic and exonic elements of the
appealed claims. In addition, appellants argue (id.) that “the prior art indicates that
a solution to the problem of target specificity lies in providing specially-engineered,
compensatory constructs that are not affected by antisense treatment, not in
providing antisense constructs that discriminate between mutant and normal forms
of the target gene.”
As set forth in Ecolochem Inc. v. Southern California Edison, 227 F.3d 1361,
1375, 56 USPQ2d 1065, 1075 (CAFC 2000) the:
“[S]uggestion to combine may be found in explicit or implicit
teachings within the references themselves, from the ordinary
knowledge of those skilled in the art, or from the nature of the problem
to be solved.” … However, there still must be evidence that “a skilled
artisan, confronted with the same problems as the inventor and with
no knowledge of the claimed invention, would select the elements
from the cited prior art references for combination in the manner
claimed.” … “[A] rejection cannot be predicated on the mere
identification … of individual components of claimed limitations.
Rather particular findings must be made as to the reason the skilled
artisan, with no knowledge of the claimed invention, would have
selected these components for combination in the manner
claimed.”…. [Citations omitted].
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