Interference No. 103,854
the aggregates of the cell surface TNF-Rs.” Id. In addition, Wallach points to Peppel which
is said to disclose that TBP dimers have greater TNF inhibitory activity than TBP monomers.
Peppel is further said to “theorize” that the TBP dimer blocks two of the three potential
receptor binding sites of the TNF trimer. Id.
Wallach concludes that
Knowing these results of Peppel, and in light of the disclosure of Wallach, those
of ordinary skill in the art would expect that a TBP trimer is significantly superior to a
TBP dimer as it is able to block all three monomers of the TNF trimer, which is known
to be the active form of TNF. Thus, just as Peppel proved that a TBP dimer has
superior properties to TBP monomers, so one would believe from reading Peppel, in
view of his reference to the binding by the TBP dimer to two of the three binding
domains of TNF, that one would achieve even better TNF inhibitory activity by
providing a TBP trimer which combines to all three binding sites of TNF. ... Thus, even
if the genus of Wallach claim 1 and Smith claim 39 were available as prior art, the
trimer of Wallach claim 3 would be patentable thereover in view of these unexpected
properties [emphases added]. Brief, pp. 17-18.
We find these arguments unconvincing.
In our view, Wallach is relying on the Peppel publication as a substitute for expert
testimony. That is, Wallach alleges that Peppel discloses a specific “fact” (i.e., that TBP
dimers have greater TNF inhibitory activity than monomers) and based on this “fact,” one of
ordinary skill in the art would have expected a TBP trimer to have “significantly superior”
activity compared to the TBP dimer. However, Wallach has not provided any objective
evidence, such as expert testimony, to explain (i) the contents of the Peppel publication, and
(ii) what one of ordinary skill in the art would have expected with respect to the TNF inhibitory
activity of a TBP trimer based on the contents of the Peppel publication. Nor has Wallach
provided any evidence of a difference between the TNF inhibitory activity of TBP trimers and
TBP dimers, TBP tetramers, or any other multimer encompassed by Smith claim 39 and
Wallach claim 1, corresponding to the count. Rather, on this record, all we have are
6
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007