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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