Appeal No. 2001-1651 Page 7
Application No. 09/238,972
only a few bases to either side of an unsuccessful target site may
give very effective inhibition of translation.
However, as appellant points out (Brief, page 15), Hoke report a 55% success
rate in obtaining effective anti-sense oligonucleotides. According to appellant
there is no reason why a similar success rate would not be expected for the
instant invention. In response, the examiner backs away from his reliance on
Hoke and agrees with appellant that Hoke reports a 55% success rate. Answer,
page 10. Nevertheless, the examiner maintains that the instant invention would
not be successful due to the unpredictability of antisense oligonucleotide therapy
and target accessibility as taught by Gewirtz and Branch. Answer, bridging
sentence, pages 10-11.
According to the examiner (Answer, page 7), Gewirtz “teach that the
inhibitory activity of an oligo depends unpredictably on both the sequence and
structure of the nucleic acid target site and the ability of the oligo to reach its
target.” Similarly, the examiner relies on Branch to teach that “‘internal
structures of target RNAs and their associations with cellular proteins create
physical barriers, which render most potential binding sites inaccessible to
antisense molecules.’” While the examiner argues that Gewirtz and Branch
address the unpredictability of antisense technology, the examiner fails to
establish a nexus between these generic references and the claims on appeal.
In addition, we find the examiner’s position to be inconsistent. According
to the examiner the specification provides an enabling disclosure of a method of
inhibiting CAT2 expression using an antisense oligo consisting of SEQ ID NO:2.
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