Appeal No. 2001-1048
Application No. 08/121,105
Given the facts in evidence on this record, it is our opinion that the examiner
has failed to provide the evidence necessary to establish that an antibody that
interacts with residues of a peptide of the amino-terminal extracellular domain of the
IL8 receptor 2 as claimed, would reasonably be expected to inhibit IL-8 binding.
While the examiner infers that an antibody capable of interacting with residues of a
peptide of the amino-terminal extracellular domain of the IL8 receptor 2 would act in
manner similar to MGSA/GRO and NAP-2, the examiner presents no evidence to
support this inference. Therefore, we agree with appellants (Brief, page 12) that
“[t]he [e]xaminer failed to establish a prima facie case of obviousness because
those with ordinary skill in the art would not be enabled to practice the invention with
a reasonable expectation of success” [emphasis removed]. In the absence of a
reasonable expectation of success, one is left with only an “obvious to try” situation
which is not the standard of obviousness under 35 U.S.C. § 103. See O’Farrell.
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