Appeal No. 2001-0992 Page 4
Application No. 08/527,880
[a]ppellants failed to produce one contraindication, scientifically based and
objective, report directing the skilled artisan not to employ conventional non-
Hodgkin’s lymphoma therapeutic regimens, such as the claimed gallium nitrate,
to treat NHL in HIV-positive patients.” It appears that the examiner is requiring
appellants’ to provide evidence of a direct teaching away from the use of gallium
nitrate to treat AIDS-associated NHL. While a reference “teaching away” from
the claimed invention is one consideration that must be given weight when
evaluating the obviousness of a claimed invention1, it is however, not the only
consideration.
Another consideration that must be given weight in evaluating whether a
claimed invention is obvious, is whether the prior art relied upon provides a
person of ordinary skill in the art with a reasonable expectation of success. In re
Vaeck, 947 F.2d 488, 493, 20 USPQ2d 1438, 1442 (Fed. Cir. 1991). On this
record, appellants have provided evidence, see supra, that standard nonAIDS-
NHL chemotherapy has been unsuccessful in treating AIDS-NHL. Based on the
evidence of record, it is our opinion, that the evidence relied upon by the
examiner does not provide a person of ordinary skill in the art at the time the
invention was made with a reasonable expectation of success of treating AIDS-
associated non-Hodgkin’s lymphoma with gallium nitrate, as is required by the
claimed invention. At best, the examiner has provided evidence suggesting that
it would have been obvious to try gallium nitrate for the treatment of AIDS-
1 In determining whether the claimed invention would have been obvious, a prior art reference
must be read as a whole and consideration must be given where the reference teaches away
from the claimed invention. Akzo N.V., Aramide Maatschappij v.o.f. v. United States Int’l Trade
Comm’n, 808 F.2d 1471, 1481, 1 USPQ2d 1241, 1246 (Fed. Cir. 1986).
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