Appeal No.: 1996-1307 Paper No. 34
Application No.: 08/038,072 Page 5
admission that agents known to inhibit $ar kinase or $ar
kinase induced phosphorylation were known in the art.
To establish obviousness of a claimed invention under
35 U.S.C. § 103, all the claim limitations must be taught or
suggested by the prior art. In re Royka, 490 F.2d 981, 985,
180 USPQ 580, 583 (CCPA 1974). The examiner has not pointed
out where the prior art teaches or suggests an agent capable
of inhibiting $ar kinase or $ar kinase induced
phosphorylation. Without such a teaching or suggestion, the
references suggest a course for further research, but not the
present invention. In re O'Farrell, 853 F.2d 894, 903,
7 USPQ2d 1673, 1680-81 (Fed. Cir. 1988). (An invitation to
experiment is not obviousness). The rejection of claim 15
under 35 U.S.C. § 103 is reversed.
Claims 2-4, 7, and 16-19 are also directed to methods of
inhibiting desensitization that require an agent that inhibits
$ar kinase-induced phosphorylation. Accordingly, the
rejection of these claims under 35 U.S.C. § 103 is also
reversed.
DECISION
The examiner's rejection of claims 2-4, 7, and 15-19
under 35 U.S.C. § § 103 is
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