Appeal No. 2001-1651 Page 9
Application No. 09/238,972
developed mammary tumors more rapidly than iNOS knockout mice.” The
examiner also finds (Answer, page 5), appellant’s specification enables a method
of inhibiting CAT2 expression using an antisense oligo consisting of SEQ ID
NO:2. Therefore, it is unclear on this record, why the examiner finds (Answer,
page 6) that appellant’s “specification does not provide any guidance regarding
the administration of any type [of] antisense oligo targeted to CAT2 that would
result in an ameliorative effect of any particular pathological state nor does the
specification provide sufficient guidance that would enable a skilled artisan to
treat a pathological condition by inhibiting CAT2.” As emphasized above, it
seems clear from appellant’s specification that inhibiting CAT2 expression, using
an antisense oligo, will inhibit production of nitric oxide. Accordingly, it appears
from this record that such a method would be applicable to the diseases set forth
in appellant’s specification. The examiner offers no evidence to the contrary.
Furthermore, since appellant’s specification provides an enabling
disclosure of an antisense oligo consisting of SEQ ID NO: 2 and a method of
inhibiting CAT2 expression using this oligo, why would it require undue
experimentation to identify other antisense CAT2 oligonucleotides with a success
rate similar to that of Hoke? The examiner conceded the success rate observed
by Hoke, and that appellant’s oligonucleotide having SEQ ID NO.: 2 is effective
in a method of inhibiting CAT2 expression. In view of these findings, the
examiner failed to provide any explanation as to how the generic teachings of
Gewirtz, and Branch apply to appellant’s claimed invention. Stated differently,
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