Appeal No. 2001-1498 Page 6
Application No. 08/912,378
required by appellants’ claimed invention. Of the three primary references
separately relied upon by the examiner, only Sessler discloses conjugates of
nucleic acid molecules and porphyrins for delivery into eukaryotic cells. Id. In
this regard, appellants argue (Brief, page 10), “the fact that porphyrins were
known to enter bacterial cells … does not provide any reasonable expectation of
success for the delivery of a combination of porphyrin and nucleic acid where the
porphyrin may be masked.”
We remind the examiner that “[t]he consistent criterion for determination
of obviousness is whether the prior art would have suggested to one of ordinary
skill in the art that this process should be carried out and would have a
reasonable likelihood of success, viewed in the light of the prior art.” In re Dow
Chemical Co. 837 F.2d 469, 473, 5 USPQ2d 1529, 1531 (Fed. Cir. 1988).
On this record, the examiner relies on Takle, George and Sessler teaching that
delivery of nucleic acids into cells, wherein uptake by porphyrin increases the
delivery of nucleic acids, to provide the reason to utilize a porphyrin-nucleic acid
composition to deliver nucleic acid into bacterial cells. However, as appellants
point out (Brief, page 10), “[t]here is … no suggestion in any of the publications
(or within the general knowledge of those of ordinary skill in the art) to even
attempt to deliver a conjugate of porphyrin and nucleic acid to a bacterial cell.”
Therefore, it is our opinion, the combination of references relied upon by the
examiner fails to suggest or provide a reasonable expectation of success in
carrying out the claimed invention. Accordingly, we reverse the rejection of
Page: Previous 1 2 3 4 5 6 7 8 9 10 Next
Last modified: November 3, 2007