Appeal No. 2001-1705 Page 9
Application No. 08/616,141
However, as appellants point out (Reply Brief, page 5), “Offensperger et al.
actually discloses inclusion of a cell surface receptor ligand in a liposome
containing an oligonucleotide. This is not what is claimed and does not suggest
the presently claimed ionic complexes.”
It is well-established that before a conclusion of obviousness may be
made based on a combination of references, there must have been a reason,
suggestion or motivation to lead an inventor to combine those references.
Pro-Mold and Tool Co. v. Great Lakes Plastics Inc., 75 F.3d 1568, 1573,
37 USPQ2d 1626, 1629 (Fed. Cir. 1996). On this record we find no suggestion
to modify the teachings of Doan with those of Offensperger to obtain the claimed
invention which, as appellants point out, require ionic complexes. Accordingly,
we reverse the rejection of claims 1-8, 11-13, 19-24 and 31 under 35 U.S.C.
§ 103 as being unpatentable over Doan and Offensperger.
The combination of Dixon, Yuan, Offensperger and Korba:
The examiner finds (Answer, pages 6-7), Dixon, “teach that certain
porphyrins inhibit HIV-1”; Offensberger “describe in vivo inhibition of HBV by
antisense oligonucleotides”; Korba “disclose routing testing methods for
determining if a compound has activity against HBV”; and Yuan “disclose the
parameters necessary for EGS [external guide sequences] in eukaryotic cells.”
However, as discussed supra, we find no suggestion to modify the
teachings of Doan with those of Offensperger to obtain the claimed invention
which, as appellants point out, require ionic complexes. Yuan and Korba fail to
make up for the deficiencies in the combination of Doan and Offensperger.
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 Next
Last modified: November 3, 2007