Appeal No. 1999-1732
Application No. 08/308,879
antagonist treated animals have decreased levels of growth. Thus, there is no reasonable
expectation that replacing the growth hormone agonist of Phares with the postulated
growth hormone antagonist taught by Chen would result in inhibiting the growth of breast
cancer cells.
The Answer asserts that one of ordinary skill in the art would have understood that
Phares teaches that PGF reduces serum growth hormone, and that it would have been
obvious to a routineer that a growth hormone antagonist would have the same effect—to
block or prevent growth hormone from binding to the receptor. It is unpredictable, however,
what effect that the antagonist will have at the receptor, as demonstrated by the fact that in
Phares, the experimental animals treated with PGF experienced an increase in growth,
whereas the instant specification teaches that animals treated with growth hormone
antagonist have decreased growth. Thus, while Phares may have provided the ordinary
artisan incentive to try the use of a growth hormone antagonist to reduce the growth of
breast cancer cells, because of the different mechanisms and the different receptors that
may be involved, the reference indeed does not provide a reasonable expectation of
success of achieving the claimed result—inhibiting the growth of breast cancer cells.
CONCLUSION
For the reasons stated above, the rejections of claims 1 and 3-7 under 35 U.S.C. §
103(a) are reversed.
REVERSED
9
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 Next
Last modified: November 3, 2007