Appeal No. 2002-1815 Page 4
Application No. 09/401,063
taught by Yamazaki, for example, to impart greater stability to the
ribozyme taught by Yamazaki.
Therefore, the examiner finds (Answer, page 11), “[t]he explicit teaching by
Yamazaki to target EGFR for therapy purposes would have led one of ordinary
skill in the art to modify the enzymatic nucleic acid taught by Yamazaki so as to
become a more viable means for targeting the aberrant EGFR RNA.” The
question remains, however, that if Yamazaki is not an enabling reference, would
persons of ordinary skill in the art at the time the invention was made have
possession of the Yamazaki ribozyme to modify? In our opinion, they would not.
As set forth in In re Hoeksema, 399 F.2d 269, 274, 158 USPQ 596, 601
(CCPA 1968), “if the prior art of record fails to disclose or render obvious a
method for making a claimed compound, at the time the invention was made, it
may not be legally concluded that the compound itself is in the possession of the
public.” As discussed, supra, Yamazaki does not disclose or render obvious a
method of making their ribozyme. In addition, there is no evidence on this record
that the Yamazaki ribozyme was deposited, on sale, or otherwise made publicly
available at the time the invention was made. Accordingly, we are compelled to
agree with appellants (Brief, page 15), Yamazaki “does not provide an enabling
disclosure by which one skilled in the art could reasonably expect to successfully
cleave an EGFR RNA using a chemically modified enzymatic nucleic acid.”
We recognize that a non-enabling reference may qualify as prior art for
the purpose of determining obviousness under §103. Reading & Bates Constr.
Co. v. Baker Energy Resources Corp., 748 F.2d 645, 652, 223 USPQ 1168,
1173 (Fed. Cir. 1985) (reference that lacks enabling disclosure is not
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