Appeal No. 1997-1670
Application 08/098,942
VEGF expression for the expected benefit of inhibiting tumor
growth (taught by Kim et al.) and because VEGF was well
known to be a tumor angiogenesis factor, as admitted by the
appellants on page 4 of the specification.
What is missing from the examiner's discussion of the rejection is any facts or
evidence which would have directed one or ordinary skill in this art to the specific
oligonucleotides of claims 8-15 or the in vitro use of those oligonucleotides as claimed in
claims 23-24. Neither Uhlmann nor Peterson teach antisense oligonucleotides that are
related to the inhibition of VEGF expression. Only Foulkes provides any information
relating to the inhibition of VEGF using an antisense nucleotide. However, the abstract of
the Foulkes document, relied upon by the examiner, provides no information about the
nature or make up of the antisense oligonucleotides described therein. To the extent that
the combination of references may be argued to demonstrate that it would have been
obvious to generally create antisense oligonucleotides directed against the VEGF
nucleotide sequence in order to inhibit VEGF expression, more is required. The claims on
appeal are directed to specific oligonucleotides defined by nucleotide sequence. In order
to establish a prima facie case of obviousness within the meaning of 35 U.S.C. § 103 of
the subject matter of the claims on appeal, the prior art must have provided sufficient
information to direct one skilled in this art to that which is claimed, i.e., the specific
oligonucleotides claimed in claims 8-15 or use thereof of claims 23-24. Thus, we find that
the examiner has not provided the factual evidence which would reasonably support a
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