Appeal No. 1997-3242
Application 07/929,834
undue experimentation for one skilled in the art to design a compound that would
specifically bind the critical site and inhibit RNA function?
According to the examiner, the claims are extremely broad; the quantity of
experimentation required to design or obtain an inhibitory compound would be significant;
there are no working examples in the specification beyond determining the location and
sequence of a critical site in the minor groove of an RNA molecule; there is no guidance
other than directing one skilled in the art to target critical sites within the minor groove
using complementary nucleotides and hydrogen bond acceptors and donors. Examiner’s
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Answer, pages 3 through 10. Finally, the examiner points to Wilson as evidence that,
even three years after the instant filing date, “relatively little progress has been made
towards generating compounds that specifically interact and inhibit critical sites on RNA
molecules, especially in the minor groove.” Id., page 8.
The specification, on the other hand, indicates that at the time of the invention,
various computer modeling systems had been used to resolve the three-dimensional
structures of specific proteins, and also to design molecules specifically interactive with
them. According to the specification, at the time of the invention, computer modeling had
found limited use in the design of compounds interactive with nucleic acids because the
generation of structural information about nucleic acids had lagged behind computer
3Wilson et al (Wilson), “The Search for Structure-Specific Nucleic Acid-Interactive
Drugs: Effects of Compound Structure on RNA versus DNA Interaction Strength,”
Biochemistry, Vol. 32, pp. 4098-4104 (1993).
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