Appeal No. 2001-2643 Page 5
Application No. 08/117,363
to those of ordinary skill in the art that they should make the claimed composition
or device, or carry out 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, we agree with Appellants that the examiner has not
adequately explained why a person of ordinary skill in the art would have been
led to combine the teachings of the cited references. Matteucci and Latham are
the most relevant to the examiner’s rejection. As the examiner stated, Matteucci
discloses oligonucleotides having linking groups that meet the limitations of the
instant claims, but discloses those groups as internucleotide linkers, not as
terminal substituents. The examiner relies on Latham for the suggestion to
attach Matteucci’s groups as terminal substituents, on the basis that “Latham
teaches that internucleotide linkages and terminal linkages are art recognized
alternatives.”
The examiner’s position is not supported by the evidence. Matteucci
teaches that the disclosed linking groups have the property of being resistant to
nuclease degradation and therefore render the oligonucleotide stable in vivo.
See page 4, lines 28-33. Latham, on the other hand, teaches oligonucleotides
linked, via a linking group, to a “transport agent,” where the linkage is designed to
Page: Previous 1 2 3 4 5 6 7 8 9 Next
Last modified: November 3, 2007