Appeal No. 2001-1411 Page 3
Application No. 08/966,876
DISCUSSION
The rejection under 35 U.S.C. § 103:
The claimed invention requires that an inhibitor of a co-repressor and a
ligand for a member of the steroid/thyroid superfamily of receptors be co-
administered to a subject. As the examiner recognizes (Answer, page 5), Chen
teach “the sequential combination of RA[3] and … butyrates led to synergistic
induction of differentiation and terminal differentiation.” We also recognize
Chen’s conclusion (page 2128, column 1), “sequential combination differentiation
therapy may be suitable for clinical evaluation in newly diagnosed patients with
APL[4] or in cases refractory to current treatment programs.” The examiner has
not identified, and we find no statement in Chen wherein RA and a co-repressor
(e.g. a butyrate) are co-administered as is required by the claimed invention.
Taunton and Morioka, relied upon by the examiner to teach the substitution of
Trichostatin A or Trapoxin for sodium butyrate in Chen’s method, fail to make up
for this deficiency in Chen.
Therefore, we disagree with the examiner’s statement (Answer, page 9),
“[i]t is clear that the prior art suggests the combination of the same two
substances as claimed for the treatment of the same condition as claimed.”
Instead, what is clear from Chen is that RA and a co-repressor are administered
sequentially. Therefore, contrary to the examiner’s position, the idea of
combining RA and a co-repressor does not flow logically from their having been
individually taught in the prior art. See Answer, page 10.
3 Retinoic acid.
4 Acute promyelocytic leukemia.
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