Ex parte ROBINSON - Page 5

              Appeal No. 1997-1670                                                                                         
              Application 08/098,942                                                                                       

              the art to arrive at the claimed invention.  Ashland Oil, Inc. v. Delta Resins & Refractories,               
              Inc., 776 F.2d 281, 297, n.24, 227 USPQ 657, 667, n.24 (Fed. Cir. 1985).   On the record                     
              before us, the examiner has not met the initial burden of establishing why the prior art,                    
              relied on, would have led one of ordinary skill in this art to arrive at the oligonucleotides of             
              claims 8-15 and the uses thereof of claims 23-24.  The examiner acknowledges that                            
              (Answer, paragraph bridging pages 6-7):                                                                      
                            [t]he difference between what is taught and instantly claimed is                               
                            that although Uhlmann et al. and Peterson et al. teach the                                     
                            advantages of employing their oligonucleotides to inhibit                                      
                            expression of genes involved in disease conditions, they do                                    
                            not explicitly teach employing their construct to inhibit the                                  
                            VEGF expression.                                                                               
                     The examiner cites Kim as teaching the inhibition of growth of tumors using                           
              monoclonal antibodies specific to VEGF to inhibit the activity of VEGF; Foulkes as                           
              teaching a method of inhibiting VEGF expression by employing antisense oligonucleotides                      
              directed against VEGF mRNA; Claffey as teaching the nucleotide sequence of murine                            
              VEGF and Tischer as teaching the nucleotide sequence of the human VEGF. (Answer,                             
              page 7).  The examiner then concludes (id.):                                                                 
                            It would have been obvious to one of ordinary skill in the art at                              
                            the time the invention was made to modify the nucleotide                                       
                            sequence of the oligonucleotide constructs taught by either                                    
                            Uhlmann et al. or Peterson et al. to create antisense                                          
                            oligonucleotides directed against the VEGF nucleotide                                          
                            sequence in order to inhibit VEGF expression as taught by                                      
                            Foulkes et al.  One would have been motivated to inhibit                                       


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