Appeal No. 2001-0690
Application No. 08/309,315
initiation of cell death is dependent upon having active tyrosine kinases present
in the cell….” Therefore, appellants conclude (id.) that the “entire process
[taught by Uckun] would be expected to be reversed by the tyrosine kinase
inhibitors that are the subject of the instant invention.” We agree.
In response, the examiner argues “there is a myriad of protein tyrosine
kinases … with a plurality of functions within the cells. … Uckun discovered that
ionizing radiation also had the effect of stimulating unidentified PTK’s….
Therefore … it would be obvious to combine a PTK [inhibitor] with radiation….”
We cannot agree with the examiner’s position.
Uckun clearly teaches (page 9008, column 1, third full paragraph):
genistein [a claimed protein tyrosine kinase inhibitor, see
e.g. appellants’ claim 9] prevented … apoptosis-related
morphologic changes in irradiated cells, with <25% of cells
showing apoptosis-related changes in morphology…
providing evidence that tyrosine phosphorylation plays an
important role in the initiation of apoptosis in human B-
lymphocyte precursors exposed to ionizing radiation.
Accordingly we agree with appellants’ argument (Brief, page 8) that
“Uckun teaches away from the present invention.” We remind the examiner, that
in determining whether the claimed invention is obvious, a prior art reference
must be read as a whole and consideration must be given where the reference
teaches away from the claimed invention. Akzo N.V., Aramide Maatschappij
v.o.f. v. United States Int’l Trade Comm’n, 808 F.2d 1471, 1481, 1 USPQ2d
1241, 1246 (Fed. Cir. 1986).
On these circumstances, it is our opinion that the examiner failed to
provide the evidence necessary to support a prima facie case of obviousness.
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