Appeal No. 2001-1378
Application No. 08/832,571
cular autophosphorylation.” Aronheim, page 949, col. 1. Aronheim states that
myristolylation, palmitoylation and farnesylation signals are sufficient for membrane
targeting of heterologous proteins. Id.
In our view, the cited references would have provided the requisite reason,
suggestion or motivation to one of ordinary skill in the art to add the myristolylation,
palmitoylation and farnesylation signals taught by Aronheim to target the constitutively
active P110 of Hu to the membrane region, closer to its substrate with a reasonable
expectation of success in view of Kapellar and Varticovski.
Where the prior art, as here, gives reason or motivation to make the claimed
invention, the burden then falls on an appellants to rebut that prima facie case. Such
rebuttal or argument can consist of any other argument or presentation of evidence that
is pertinent. In re Dillon, 919 F.2d 688, 692-93, 16 USPQ2d 1897, 1901 (Fed. Cir.
1990) (en banc), cert. denied, 500 U.S. 904 (1991).
Appellants argue that Hu teaches away from the invention as claimed as Hu
teaches that “the only way to activate wild-type PI 3-kinase, is the result of a
combination of binding, phosphorylating and localizing of wild-type PI 3-kinase by
tyrosine kinases.” Brief, page 13. According to Appellants, this teaches away from
adding membrane targeting lipid moieties to a wild-type PI 3-kinase or to Hu's PI 3-
kinase polynucleotide fusion protein construct.
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