Appeal No. 2000-2269 Page 5
Application No. 08/862,337
Appellants argue that the nucleic acids of the present claims are different
from the “nucleic acid antibodies” disclosed by Gold, in that Gold’s nucleic acids
are defined as capable of binding “any compound of interest,” including
carbohydrates, viruses, dyes, or cofactors, whereas the nucleic acids of the
present claims bind only to the antigen recognition site of an antibody. Appeal
Brief, page 4. Appellants argue that Gold would not have suggested the instantly
claimed products and methods because “the only place in [Gold’s] lengthy
disclosure where a true antibody is mentioned as a target molecule is within the
‘laundry list’ of putative target molecules set forth at column 13, lines 54-60.” Id.,
page 5. Appellants conclude that
[t]his inclusion, in the Gold patent, of “antibodies” in a broad list of
putative target molecules does not establish that nucleic acids
binding specifically to antigen binding sites of antibodies were
contemplated by Gold, or that one skilled in the art would have had
a reasonable expectation of producing such nucleic acid ligands.
Id. Additionally, Appellants submitted rebuttal evidence in the form of a
declaration under 37 CFR § 1.132 by inventors Jack D. Keene and Daniel J.
Kenan.
“In rejecting claims under 35 U.S.C. § 103, the examiner bears the initial
burden of presenting a prima facie case of obviousness.” In re Rijckaert, 9 F.3d
1531, 1532, 28 USPQ2d 1955, 1956 (Fed. Cir. 1993). “[The Examiner] can
satisfy this burden only by showing some objective teaching in the prior art or
that knowledge generally available to one of ordinary skill in the art would lead
that individual to combine the relevant teachings of the references.” In re Fritch,
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