Appeal No. 1999-1330
Application No. 08/527,373
studies which would reflect an increase in the amount of wild-type p53 in cells to be
subjected to radiation, but reflect data in which the presence of altered p53 is present in
cells. Thus, this information does not reasonably appear to be as relevant to the
claimed subject matter as the disclosures of Wills, Liu, and Nabeya.
To the extent that appellants urge that “[t]he cited prior art provides no
reasonable expectation that the claimed method would be successful in improving the
treatment of tumors, and therefore the content of the cited prior art provides an
insufficient basis for the formation of a rejection under 35 U.S.C. § 103," (Brief, page 7)
we would remind appellants that absolute predictability is not required, but only a
reasonable expectation of success. In re O’Farrell, 853 F.2d 894, 903, 7 USPQ2d
1673, 1681 (Fed. Cir. 1988). Here, the examiner has established, through the
teachings of the references relied on, that one of ordinary skill would have been led to
combine the treatment of tumors, particularly in nude mice, using the transformation of
tumor cells with a polynucleotide which would encode wild-type p53 and use that
treatment in combination with the conventional radiation treatment, with at least a
reasonable expectation of obtaining improved results in the treatment or the tumor. It
also must be remembered, to the extent that the appellants have addressed the
teachings of the individual reference, that the test is not what the individual references,
standing alone, would have suggested to a person having ordinary skill in the art.
"Rather, the test is what the combined teachings of the references would have
14
Page: Previous 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 Next
Last modified: November 3, 2007