Appeal No. 2001-2379 Page 7
Application No. 08/931,666
the claimed process; and (2) whether the prior art would also have revealed that
in so making or carrying out, those of ordinary skill would have had a reasonable
expectation of success. Both the suggestion and the reasonable expectation of
success must be founded in the prior art, not in the applicant’s disclosure.” In re
Vaeck, 947 F.2d 488, 493, 20 USPQ2d 1438, 1443 (Fed. Cir. 1991) (citation
omitted)
In this case, the references cited by the examiner do not support a prima
facie case of obviousness. The examiner has not adequately shown that the
references would have suggested a method of treating HIV by administering
cationized anti-Tat antibodies. First, the examiner has not shown that that the
references would have suggested Tat as a therapeutic target to those of skill in
the art. Although Barone discloses that recombinant Tat was bound by
antibodies in sera from 35% of the tested AIDS patients, the reference does not
suggest that additional (exogenous) antibodies would be likely to have a
beneficial effect. Barone simply concludes that the cloning of tat “should help in
determining the role, if any, of this protein in the cytopathic activity of the HTLV-III
[HIV] virus.” Page 672. The examiner has not adequately explained why Barone
would have led those skilled in the art to use anti-Tat antibodies as a treatment
for HIV infection.
In addition, the examiner has not shown that the prior art would have led
the skilled artisan to expect that a cationized antibody would bind to an
intracellular target after being taken up by a cell. The examiner cites Triguero as
teaching that cationized antibodies are taken up by cells of the blood-brain
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