Appeal No. 1999-1215
Application No. 08/401,192
The initial burden of presenting a prima facie case of obviousness rests
on the examiner. In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444
(Fed. Cir. 1992).
According to the examiner (Answer, page 3), Hélène teach linear oligos
for inhibition of gene expression. However, Hélène does not teach oligos
containing different regions intended to act through different mechanisms. The
examiner notes that Blumenfeld teach (Answer, page 3) “circular oligos
comprising two regions, an antisense region targeted to a mRNA molecule and a
sense region targeted to a (protein) transcription factor.” The examiner argues
(Answer, page 3) that Blumenfeld “teach that combining the sense and antisense
approaches should produce a synergistic effect in inhibiting gene expression.”
The examiner relies on Inoue to teach (Answer, page 4) “oligo sequences which
are cleaved by RNase H.”
While a person of ordinary skill in the art may possess the requisite
knowledge and ability to modify the linear oligos of Hélène, the modification is
not obvious unless the prior art suggested the desirability of the modification. In
re Gordon, 733 F.2d 900, 902, 211 USPQ 1125, 1127 (Fed. Cir. 1984). Here we
see no such reason to modify the references as applied. In fact, the Blumenfeld
reference, relied upon by the examiner (Answer, page 4) to teach chimeric
oligos, teaches away from using linear oligos. Blumenfeld teach (title) “closed
sense and antisense oligonucleotides.” Blumenfeld teach (pages 13-14):
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