Appeal No. 1999-1245
Application No. 08/245,282
expectation of success in view of the teachings of Ward et al. (EJI, 1993),
using known chemical compounds, for their known intended use.
Accordingly, the modification of Ward (1993) by modulating the
production of D-3 phosphoinositides by the addition of chemical agents
as suggested by Vandenberghe and Ward (1992) in order to obtain a
method for modulating the response of T cells expressing a CD28 cell
surface receptor was within the ordinary skill in the art at the time the
claimed invention was made. From the teachings of the references, it is
apparent that one of ordinary skill in the art would have had a reasonable
expectation of success in producing the claimed invention. Therefore,
the invention as a whole is prima facie obvious, as evidenced by the
references, especially in the absence of evidence to the contrary.
As to claim 49, the examiner further finds that
Okada discloses that wortmannin inhibits PI 3-kinases activity and
that PI 3-kinase activity is involved in the regulation of cell proliferation.
In view of the teachings of Okada regarding the ability of wortmannin to
inhibit PI 3-kinases, it would have been obvious to one of ordinary skill in
the art to modify the method of Ward (EJI, 1993) and Vandenberghe by
the addition of wortmannin since one of ordinary skill would have the
reasonable expectation that wortmannin would also inhibit PI 3-kinase
activity in activated T cells, lacking evidence to the contrary.
Accordingly, the modification of the method of Ward et al. (EJI,
1993) and Vandenberghe by the addition of wortmannin as suggested by
Okada in order to obtain a method of modulating the response of T cells
expressing a cell surface receptor was within the ordinary skill in the art at
the time the claimed invention was made. From the teachings of the
references it is apparent that one of ordinary skill in the art would have
had a reasonable expectation of success in producing the claimed
invention. Therefore, the invention as a whole is prima facie obvious.
We find the examiner has not established a prima facie case of obviousness on
the record before us, or that the cited references both suggest the claimed subject
15
Page: Previous 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 Next
Last modified: November 3, 2007