Appeal No. 1997-4380
Application No. 08/147,878
To overcome the deficiency in Bielinska the examiner applies either
Iademarco to teach (Answer, page 8) “the sequence of the human VCAM-1
promoter (Fig. 3),” Degitz to teach (Answer, page 9) “the sequence of the human
ICAM-1 promoter (Fig. 2),” or Montgomery to teach (Answer, page 10) “the
sequence of the promoter of the human ELAM-1 (E-selectin) gene (Fig. 2).”
Appellants argue (Brief, pages 8, 11, and 12) that each of Iademarco, Degitz
and Montgomery merely teach the sequence of the promoter region of their
respective adhesion molecule gene. Each of appellants claims are directed to
specific sequences. The examiner argues (Answer, page 12) that:
Appellants argue that the prior art does not suggest the nucleotide
sequences of the claimed oligos. This argument is not persuasive …
[t]he only element of the claimed invention which is not explicitly taught
is the length of the oligos, which [a]ppellants admit is easily
ascertained by one of ordinary skill in the art (specification p. 19, lines
4-7).
The examiner incorporates this argument as it applies to the rejection of
claims 1, 2, 15-17 and 34 over Bielinska in view of Iademarco to the remaining two
rejections under 35 U.S.C. § 103. See Answer, page 13 “[a]ppellants repeat the
arguments made against the previous two rejections, which are not persuasive for
the reasons discussed above.” Appellants’ specification page
19, lines 4-7 states “[p]ersons of ordinary skill in the art can easily ascertain optimal
lengths of oligonucleotide for interaction with particular transcription factors.” To the
extent that the examiner relies upon appellants’ statement and considers the
Adiscovery of an optimum value of a result effective variable in a known process is
ordinarily within the skill of the art,@ In re Boesch, 617 F.2d 272, 276, 205 USPQ
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