Appeal No. 2001-1048
Application No. 08/121,105
IL8 receptor 2. However, we note that in order to establish a prima facie case of
obviousness, there must be both some suggestion or motivation to modify the
references or combine reference teachings and a reasonable expectation of
success. In re Vaeck, 947 F.2d 488, 493, 20 USPQ2d 1438, 1442 (Fed. Cir.
1991). In the absence of a reasonable expectation of success in obtaining anti-
IL8R2 NH2 terminus peptide antibodies that competitively inhibit IL8 binding of IL8
receptor 2, one is left with only an “obvious to try” situation which is not the standard
of obviousness under 35 U.S.C. § 103. In re O’Farrell, 858 F.2d 894, 904, 7
USPQ2d 1673, 1681 (Fed. Cir. 1988).
In determining whether the evidence relied upon provides one with a
reasonable expectation of success, we recognize appellants’ argument (Brief, page
11) that LaRosa notes “the uncertainty of the role of the NH2 terminus, … [by stating]
that the ‘data does not exclude a role of the NH2 terminus on the formation of the
high affinity binding site.’” In addition, LaRosa suggests (page 25406, column 1)
that “[t]he NH2 terminus may provide specificity by either preventing or allowing the
ligands to interact with a second site on the receptor, possibly by conformational
constraints.” In view of this, LaRosa conclude (page 25406, column 2) that
“[d]etailed molecular resolution of IL-8 and the IL-8 binding site will provide the
framework for the development of novel IL-8 receptor antagonists….” Therefore, in
our opinion, LaRosa would not provide a person of ordinary skill in the art with a
reasonable expectation of success in obtaining the claimed invention. Murphy, Lee,
and Geysen fail to make up for the deficiencies of LaRosa.
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