Appeal No. 1997-2510
Application No. 07/868,539
ordinary skill in the art to do with oligonucleotides with hairpin loops”. Sakata
teach “[s]tudies on the structure and stabilizing factor of the CUUCGGG hairpin
RNA.” See title. While Sakata teach that “the 2-amino group of guanosine in the
loop (9G) stablize the CUUCGG hairpin which is known to have an unusually
high Tm” (see Abstract), the examiner fails to identify some reason or suggestion
as to why a person of ordinary skill in the art would substitute this CUUCGG
sequence into Vickers’ antisense oligonucleotides.
The examiner fails to explain why a person of ordinary skill in the art
would want to modify Vickers to produce a hairpin with an unusually high Tm.
The examiner also fails to explain why one of ordinary skill in the art would
expect the six nucleotides of Sakata to maintain their unusually high Tm in the
context of the construct taught by Vickers. We remind the examiner, 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).
The Metzler, Uhlmann and Inouye references fail to make up for the
deficiencies in the combination of Vickers and Sakata. We note, the examiner’s
reference to the claims of Inouye. Inouye does not teach a DNA fragment
according to the claimed invention wherein a first region whose sequence
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