Appeal No. 2002-1815 Page 5
Application No. 09/401,063
anticipating, but “itself may qualify as a prior art reference under §103, but only
for what is disclosed in it”). In this regard, the examiner finds that the teaching of
Yamazaki would have motivated a person of ordinary skill in the art to modify the
enzymatic nucleic acid taught by Yamazaki. Answer, page 11. While this may
be true, what is missing is a disclosure in Yamazaki that placed the ribozyme in
the possession of a person of ordinary skill in the art. There is no evidence on
this record that the other references relied upon to teach DNAzymes and various
modifications of ribozymes would have made up for the deficiencies in Yamazaki.
For the foregoing reasons, we reverse the rejection of claims 27-34, 40,
42-46 and 48-53 stand rejected under 35 U.S.C. § 103 as obvious over
Yamazaki in view of Rossi, Usman, Joyce and Ortigāo.
REVERSED
Sherman D. Winters )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
William F. Smith )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
Donald E. Adams )
Administrative Patent Judge )
DA/dym
Anita J. Terpstra, Ph.D.
McDonnell, Boehnen, Hulbert
& Berghoff
300 South Wacker Drive
Suite 3200
Chicago, IL 60606
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