Appeal No. 2001-1705 Page 6
Application No. 08/616,141
116 F.3d 1454, 1457, 43 USPQ2d 1030, 1032 (Fed. Cir. 1997). “Every element
of the claimed invention must be literally present, arranged as in the claim.”
Richardson v. Suzuki Motor Co., Ltd., 868 F.2d 1226, 1236, 9 USPQ2d 1913,
1920 (Fed. Cir. 1989). Since Cannon fails to teach an amount of a macrocycle
effective to enhance delivery of the compound to the cells, Cannon fails to
anticipate the claimed invention. Accordingly, we reverse the rejection of claims
1, 2, 5, 6, 19, 20, 23, and 30 under 35 U.S.C. § 102(b) as being anticipated by
Cannon.
THE REJECTIONS UNDER 35 U.S.C. § 103:
The combination of Dixon in view of any one of Yu, Leonetti or Lisziewicz:
The examiner finds (Answer, page 5), Dixon “disclose that certain
porphyrins inhibit the reverse transcriptase of HIV-1.” In addition, the examiner
finds (Answer, page 6), that each of Yu, Leonetti and Lisziewicz “is concerned
with inactivation of HIV-1 through the use of oligonucleotides.” Based on these
findings, the examiner concludes (id.), “[i]t would have been prima facie obvious
… to have combined the antiviral porphyrins described by Dixon ... with the
antiviral oligonucleotides taught by Yu …, Leonetti …, or Lisziewicz … for an
improved multi-drug antiviral treatment regimen.” In responding to appellants’
arguments the examiner makes reference (Answer, page 11) to In re Kerkhoven,
626 F.2d 846, 205 USPQ 1069 (CCPA 1980) for the proposition that “[i]t is prima
facie obvious to combine two compositions each of which is taught by the prior
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