Appeal No. 2001-2643 Page 6
Application No. 08/117,363
be cleaved under intracellular conditions, so as to release the oligonucleotide
from the transport agent. See, e.g., page 10, lines 19-35.
The examiner has not adequately shown that the prior art would have
suggested combining these teachings of different linking groups, having different
properties, and located in different locations on the oligonucleotides, in the
manner required to produce the invention of instant claim 16. “Combining prior
art references without evidence of such a suggestion, teaching, or motivation
simply takes the inventor’s disclosure as a blueprint for piecing together the prior
art to defeat patentability—the essence of hindsight.” In re Dembiczak, 175 F.3d
994, 999, 50 USPQ2d 1614, 1617 (Fed. Cir. 1999) (citations omitted). The
rejections under 35 U.S.C. § 103 are reversed.
Other Issues
1. Claims 16-29
The examiner’s rejections focus on the oligonucleotides of claim 1. Claim
16 is directed to a nucleoside having the same amine substituent as recited in
claim 1 at the 2’-O-, 3’-O-, or 5’-O-position. Since the claim is directed to the
unlinked nucleoside, an amine substituent at any of these positions would
necessarily be a terminal substituent. According to the formula recited in claim
16, the amine substituent can be a C1 alkyl group linked to a nitrogen having R1a
and R1b substituents, both of which can be hydrogen. Thus, the amine
substituent can be –CH2NH2.
Matteucci discloses synthetic methods that utilize modified nucleosides
that appear to meet the limitations of claim 16. See, e.g., compound 5 in Figure
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