Appeal No. 1997-2510
Application No. 07/868,539
illustrates the two IE-3 regions oriented in opposite directions. Notwithstanding
the examiner’s failure to clearly identify the evidence supporting his argument,
the examiner finds (Answer, page 10) that “[h]ere, one of ordinary skill in the art
would have found it obvious to decrease Vmw 175 binding by using the DNA with
the sequence of 5’ … NATCGTCCACACGGNN NNCCGTGTAAGGACGATN …
3’ to bind to the Vmw 175 protein….”
Appellant argues (Brief, pages 16-17) “Kaji teaches the use of single-
stranded oligonucleotides that bind to viral mRNA … [t]he method would not
work if double-stranded DNA were employed.” As appellant emphasizes (id.), in
contrast to the claimed invention, Kaji repeatedly states that compositions
effective to inhibit viral replication are single stranded. 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, as it does in the case of Kaji, 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).
With regard to Everett, appellant argues (Brief, bridging paragraph, pages
17-18) while “Everett teaches the nucleotide sequence requirements of a
transcription factor protein Vmw175, Everett provides no motivation for
synthesizing oligonucleotides containing self-complimentary regions….”
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