Appeal No. 2000-0839
Application No. 08/355,502
We are not persuaded by the examiner’s argument (Answer, page 11) that
“one of ordinary skill in the art would expect success with the IL-10/Fc chimera since
claim 2 in the ‘964 patent expressly recites fusions of ligand binding partner
proteins and immunoglobulin chains, and to expect otherwise one would have to
consider the claim 26 of the ‘964 patent invalid.” Instead, we agree with appellants’
(Brief, page 13) that “Capon’s claim 2 could be perfectly valid and yet not render
obvious a species within it.” In our opinion, this argument also attempts to
improperly shift the examiner’s burden7 of establishing a prima facie case of
obviousness to appellant.
On this record, appellants’ provide evidence (Capon II) that a person of
ordinary skill in the art would have had less than a reasonable expectation of
success in obtaining an IL-10/Fc fusion protein wherein both ends retain their
biological activity. Supporting this evidence, appellants argue (Brief, page 13) that
while it is undisputed8 that the scope of the ‘964 patent is immense, the patent also
“fails to so much as mention the general class of molecules encompassing IL-10 …
6 Claim 2 (‘964). Nucleic acid encoding a polypeptide fusion of a ligand binding
partner protein and an immunoglobulin chain, wherein the ligand binding partner
protein is not a platelet growth factor receptor or an insulin receptor said ligand
binding partner protein and said immunoglobulin chain being fused through C- or N-
terminal amino or carboxyl groups, and said fusion further comprising an additional
fusion of an agent selected from the group consisting of a multiple subunit (chain)
polypeptide, a portion or an immunoglobulin superfamily member, a toxin and a
polypeptide therapeutic agent not otherwise associated with an immunoglobulin,
and an immunoglobulin chain.
7 It is the examiner who has the initial burden of presenting a prima facie case of
obviousness. In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed.
Cir. 1992).
8 The examiner agrees (Answer, page 8) that the scope of the ‘965 patent is
immense.
6
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