Ex parte ROBINSON - Page 6




              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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