Appeal No. 2002-1815 Page 3
Application No. 09/401,063
examiner, however, finds that Yamazaki do not teach a ribozyme which has a
chemical modification as required by the claimed invention. Id. To make up for
this deficiency, the examiner relies on Rossi, to teach vector delivery systems for
ribozymes; Usman, to teach modified ribozymes; Joyce, to teach DNAzymes;
and Ortigāo, to teach antisense oligodeoxynucleotides with inverted terminal
internucleotidic linkages. Answer, pages 4-5.
However, as appellants point out (Brief, page 15), The Yamazaki abstract
merely teaches that a specific ribozyme can be used to cleave a specific mutant
EGFR sequence. According to appellants, Yamazaki “does not provide an
enabling disclosure by which one skilled in the art could reasonably expect to
successfully cleave an EGFR RNA using a chemically modified enzymatic
nucleic acid. First, Yamazaki does not provide any EGFR sequences, nor does it
teach any binding/target sites in the EGFR gene.” Id. In addition, appellants
argue (Brief, page 16), “none of the other cited references even mentions the
EGFR gene, none of them provide a disclosure by which one skilled in the art
could reasonably expect to successfully cleave an EGFR RNA using a
chemically modified enzymatic nucleic acid.”
The examiner recognizes appellants’ arguments (see, e.g., Answer, page
9). Nevertheless, the examiner argues (Answer, page 10):
Yamazaki clearly teaches an enzymatic nucleic acid which
specifically cleaves EGFR. Applicant’s claimed invention is
distinguished from the ribozyme taught by Yamazaki only in that
the claimed enzymatic nucleic acid molecule further comprises a
chemical modification; however, chemically modified ribozymes
were not novel at the time the instant invention was made. The
prior art taught chemical modifications for incorporation into
ribozymes and provided clear motivation to modify the ribozyme
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