Appeal No. 2001-0490 Page 4
Application No. 08/524,206
DISCUSSION
THE REJECTION UNDER 35 U.S.C. § 112, FIRST PARAGRAPH:
According to the examiner (Answer, page 6), “[t]he specification does not
enable any person skilled in the art to make and use the invention commensurate
in scope with the current claims.” The examiner did not argue the claims
separately therefore for the reasons set forth above we limit our discussion to
representative independent claim 1.
With reference to Uhlmann, Milligan, Stein and Tseng the examiner finds
(Answer, page 7), “[a]t the time the application was filed therapeutic
administration of oligonucleotides to an animal or human subject by any route
was considered by those skilled in the art to be an undeveloped and
unpredictable method of treatment….” However, in contrast to the claimed
invention, each of the references relied upon by the examiner are drawn to anti-
sense therapies. Reply Brief, page 6. Apparently recognizing this deficiency in
the references, the examiner simply concludes (Answer, page 7):
The obstacles to providing sufficient mRNA-binding
oligonucleotides to a patient’s cells … are even greater for the
claimed method, wherein the DNA molecules are targeted to a
DNA-binding protein, because the affinity of oligonucleoties for their
complementary target mRNAs is expected to be greater than the
affinity of double-strand DNAs for their binding site of the protein.
However, as appellants recognize (Reply Brief, page 6), “the [e]xaminer provided
no evidence to support this statement.” We remind the examiner that our
reviewing court has held that findings of fact must be supported by substantial
evidence within the record. In re Gartside, 203 F.3d 1305, 1315, 53 USPQ2d
1769, 1775 (Fed. Cir. 2000) (“because our review of the board’s decision is
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