Appeal No. 2002-1547 Page 7
Application No. 09/259,434
It is true that Sirtori disclosed that the to Apo AI-Milano mutant could form
dimers, and that the dimers were probably responsible for the longer half-life of
Apo AI-Milano in circulation compared to normal Apo AI. See pages 4-5. Thus,
Sirtori may have motivated a person of ordinary skill in the art to try to make
dimers. However, in the absence of adequate direction regarding how to do so,
Sirtori at best makes the composition of the instant claims “obvious to try.” See
In re Eli Lilly & Co., 902 F.2d 943, 945, 14 USPQ2d 1741, 1743 (Fed. Cir. 1990)
(“An ‘obvious-to-try’ situation exists when a general disclosure may pique the
scientist’s curiosity, such that further investigation might be done as a result of
the disclosure, but the disclosure itself does not contain a sufficient teaching of
how to obtain the desired result.”).
Other Issue
Appellants’ previous application 08/104,063 issued as U.S. Patent
5,876,968 and contains claims that are very similar to some of the claims in the
instant application. Appellants have filed a terminal disclaimer in this case,
obviating any obviousness-type double patenting issue. See Paper No. 4, filed
September 13, 1999. We note, however, that instant claim 19 appears to be
directed to the same invention as that of patented claim 3, and that a terminal
disclaimer does not obviate a rejection for “same invention” double patenting.
Upon return of this case, the examiner should review the pending claims
and ensure that none of the claims are directed to the same invention as the
claims in Appellants’ ‘968 patent. If the instant claims are directed to the same
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