Interference No. 103,854
amino acid sequence of TBP-I and at least one monomer having the amino acid sequence of
TBP-II. Wallach refers to this type of multimer as a heteromultimer. A multimer wherein all
the monomers are the same is referred to as a homomultimer. Brief, p. 29, footnote 16.
Wallach in effect acknowledges that the heteromultimers described in claim 6 would
have been prima facie obvious to one of ordinary skill in the art since they are species within
the genus of multimers encompassed by Smith claim 39 and Wallach claim 1, corresponding
to the count. Brief, p. 28, para. 2. However, Wallach contends that if Smith claim 39 or
Wallach claim 1 were available as prior art, they would not have rendered obvious the
heteromultimer described in Wallach claim 6 because the referenced claims 39 and 1 are
“silent as to the nature of the TBP monomers.” Brief, p. 29. That is, according to Wallach,
“one of ordinary skill in the art would [have] assume[d]” that the properties of the
heteromultimer would be identical to the properties of the homomultimer, at the time the
invention was made [emphasis added]. Id. Wallach points to a publication by Pinckard8 and
argues that based on the teachings of this reference, it is now known that
TNF induces the formation of heterocomplexes consisting of both p55 and p75 TNF
receptors. This finding suggests that TBP-I and TBP-II bind to different portions of the
TNF molecule, thereby creating the expectation that a heteromultimer will behave
differently from a homomultimer. Indeed, one of ordinary skill in the art would expect
from Pinckard that a heteromultimer will bind with greater affinity to TNF than a
homomultimer. ... From a reading of Pinckard, it would be expected that the
heteromultimer will have properties different from, and superior to, a homomultimer,
which properties would not have been obvious to one of ordinary skill in the art at the
time the present invention was made [emphases added]. Brief, pp. 29-30.
We disagree. Here, we have the same problem with the so-called “facts” as we did
with claim 3. Wallach is relying on a reference which was published six (6) years after the
filing date of their application. Wallach has not provided any objective evidence as to what
8 Pinckard et al. (Pinckard) “Ligand-Induced Formation of p55 and p75 Tumor
Necrosis Factor Receptor Heterocomplexes on Intact Cells,” J. Bio. Chem., Vol. 272,
pp. 10784-789 (1997).
9
Page: Previous 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 Next
Last modified: November 3, 2007