Appeal No. 2001-2347
Application No. 08/251,574
2. Therefore, it would reasonably appear that those of ordinary skill in the art reviewing
White would have recognized the disclosed use of the 15A8 antibody as a diagnostic.
Appellants additionally submit that, at the time of the present invention, it was
unclear if either or both targeted antibodies would be functional subsequent to
conjugation and that “obvious to try” is not the legal standard for obviousness. Brief,
page 11.
Appellants, in essence, argue that the examiner has not shown a reasonable
expectation of success of achieving functional conjugates having the claimed
specificities, and that the examiner’s evidence would merely support that it would have
been “obvious-to-try” preparation of the claimed conjugates in view of the prior art.
We disagree. In our view, Huston provides those of ordinary skill in the art with
detailed disclosure as to how to preserve functionality of the conjugate components.
Huston teaches specific conjugates including an antibody coupled with tumor necrosis
factor or interleukin-2. Huston, page 14. It would reasonably appear that White
provides a sufficient motivation or reason for one of ordinary skill in the art to substitute
the 15A8 as the antibody in the antibody conjugate of Huston through its disclosure of
the selectivity of the 15A8 antibody and its use as a diagnostic for breast cancer.
White, page 1339, column 2. Since we find the combination of Huston with White to be
sufficient to support a prima facie case of obviousness to defeat claim 1, we do not
reach the rejection in view of Schultz. We also find Houston, Zimmerman and Hudziak
further support the Huston disclosure that biological response modifers were known at
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