Appeal No. 2000-0461 Page 6
Application No. 08/460,569
have been led away from an MHC class I construct as defined by appellants’
claimed invention.
Therefore, based on the evidence before us we are compelled to reverse
the rejection of claims 1-4, 6-9, 11 and 15 under 35 U.S.C. § 103 as being
unpatentable over the combination of Sharma and Greenfield, with or without Liu
or Mezzanzanica. In this regard, we remind the examiner, if the prior art does
not teach any specific or significant utility for the disclosed compounds, then the
prior art is not sufficient to render structurally similar claims prima facie obvious
because there is no motivation for one of ordinary skill in the art to make the
reference compounds, much less any structurally related compounds. In re
Stemniski, 444 F.2d 581, 586, 170 USPQ 343, 348 (CCPA 1971). On this
record, appellants have provided substantial evidence to suggest that a MHC
class I construct as defined by their claimed invention would not be useful in
treating the autoimmunity as disclosed in Sharma. None of the other references
relied upon by the examiner make up for this deficiency in Sharma.
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