Appeal No. 2001-1705 Page 8
Application No. 08/616,141
For these reasons, it is our opinion that the examiner failed to meet her burden2
of providing the evidence necessary to support a prima facie case of
obviousness. Accordingly, we reverse the rejection of claims 1-8, 11, 12, 19-25
and 31 under 35 U.S.C. § 103 as being unpatentable over Dixon in view of any
one of Yu, Leonetti or Lisziewicz.
The combination of Doan and Offensperger:
The examiner finds (Answer, page 6), Doan, “describe oligonucleotide
porphyrin conjugates.” In addition, the examiner finds (id.), Offensberger
“describe in vivo inhibition of HBV replication wherein antisense oligonucleotides
are employed.” Based on this evidence, the examiner concludes (id.), “[i]t would
have been prima facie obvious to … produced porphyrin-anti-HBV antisense
oligonucleotide complexes with the reasonable expectation of inhibiting HBV
replication.”
As appellants point out (Brief, page 14), in contrast to the claimed
invention which requires an ionic bond between the porphyrin and the compound
(oligonucleotide), Doan teach covalently linking an oligonucleotide to a porphyrin
ring. In responding to appellants’ argument, it appears that the examiner shifts
horses and emphasizes (Answer, pages 12-13) that Offensperger:
also teach encapsidation of the oligonucleotiedes into liposomes
for enhanced stability and delivery to target cells and thus provides
the suggestion and motivation to ionically bind the porphyrin with a
negatively charged compound by teaching enhanced stability and
delivery to target cells when the porphyrin is ionically bound to a
lipid.
2 The initial burden of presenting a prima facie case of obviousness rests on the examiner. In re
Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992).
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