Appeal No. 2001-1970 Page 13
Application No. 08/260,190
experimentation when considered relative to other antisense-based therapeutic
methods.
Finally, we must also disagree with the examiner concerning the probative
value of the Gruenert declaration. Dr. Gruenert declared that the in vitro results
provided in the specification were reasonably predictive of in vivo efficacy. See
¶¶ 3-5. Dr. Gruenert also declared that the published literature at the time of
filing would have supported an expectation of success in using MN antisense
oligonucleotides to inhibit MN gene expression in vivo. See ¶ 6. Finally, Dr.
Gruenert declared that the screening procedure disclosed in the specification,
together with the published literature at the time of filing, would have enabled
those skilled in the art to identify therapeutically useful oligonucleotides. See
¶¶ 7-8.
Of course, “Appellant’s opinion on the ultimate legal issue is not evidence
in the case. . . . [However,] some weight ought to be given to a persuasively
supported statement of one skilled in the art.” In re Lindell, 385 F.2d 453,
155 USPQ 521, 524 (CCPA 1967) (emphasis added). Here, the conclusions set
out in the Gruenert declaration were well-reasoned and supported by evidence,
either in the specification or in cited prior art references.
The lack of “factual evidence”, as the examiner put in, in addition to that
provided in the specification, is not a fatal flaw in a Rule 132 declaration.
Declaratory evidence can support patentability in a number of ways. In this case,
the declaratory evidence was presented to show how the guidance provided by
the specification, combined with the state of the art, would have been viewed by
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