Appeal No. 2001-2643 Page 3
Application No. 08/117,363
Discussion
The claims are directed to nucleosides, and compounds comprising them,
which are modified to have a terminal amine substituent in the 2’-O-, 3’-O-, or
5’-O-position, where the substituent is defined by a chemical formula. See, e.g.,
claim 1. The claimed products can also comprise moieties such as “a steroid
molecule, a reporter molecule, a lipophilic molecule, a reporter enzyme, a
peptide, [or] a protein.” Claim 1. The specification discloses that the claimed
products are useful in, among other things, antisense methodologies. See pages
7 and 9.
The examiner rejected all of the claims as obvious in view of Urdea,
Carrico, Matteucci, and Latham, either alone or in combination with “applicants[’]
admissions.”1 The examiner reasoned as follows:
Urdea et al. teaches a 5’-O-position having an R1 substituent (see
Urdea bottom of col[.] 10). Matteucci discloses the claimed
“O-C-N” chain (see Matteucci p. 16 lines 30-35) as well as
numerous other internucleotide linkages (see Matteucci page 13,
line 2 to page 20 line 30, for example).
The claims differ from Matteucci in the recitation of terminal
linkages. Latham teaches that internucleotide linkages and
terminal linkages are art recognized alternatives (see for example
Latham page 18, lines 3-17). Latham also teaches the attachment
of linkages at the 2’ position of the sugar.
It would have been prima facie obvious to one of ordinary skill in
the art at the time the invention was made to combine the prior art
teachings [of] nucleotide linkages because, lacking a showing of
criticality, or other secondary consideration, the claimed alkyl chain
is considered one of several alternative linkages, any one of which
the art skilled [worker] would reasonably expect to function in the
1 The examiner relied on Appellants’ “admissions” only to meet the specific limitation of claims 5
and 19. The basic rationale of both rejections was the same. See the Examiner’s Answer, pages
4-5.
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