Appeal No. 2003-0554 Page 4
Application No. 09/575,554
However, we recognize, as does the examiner (Answer, page 7), that
none of the references relied upon by the examiner teach an oligonucleotide as
set forth in appellants’ claimed invention. To make up for this deficiency the
examiner simply concludes (id.), “[t]he specific sequences would be derived by
one of ordinary skill in the art making a variety of antisense oligonucleotides
targeted at the taught regions.” As we understand the examiner’s conclusion,
since the references teach constructing antisense oligonucleotides to codons 12
and/or 61 of N-ras, H-ras and Ki-ras, as well as to the translation initiation codon
site of H-ras, a person interested in constructing an antisense oligonucleotide to
human Ki-ras would necessarily arrive at appellants’ claimed oligonucleotide,
which would then be effective in inhibiting expression of the Ki-ras gene. In our
opinion, however, the evidence relied upon by the examiner is not sufficient to
lead a person of ordinary skill in the art to the examiner’s conclusion.
To the contrary, Bos, which in our opinion is the closest prior art reference
of record, did what the examiner has suggested -- produced oligonucleotides
complementary to a DNA sequence encoding a mutant Ki-ras protein which
contain a single base pair mutation in the codon encoding the amino acid at
positions 12 and 61. Bos, however, failed to arrive at an oligonuclotide within the
scope of appellants’ claimed invention. See Bos, column 4, lines 26-48. Of
interest, however, is that Bos discloses sequences that are complementary to
appellants’ claimed oligonucleotide. For example, as illustrated below, Bos
discloses (column 4, lines 32-33) a sequence for an oligonucleotide directed at
the codon encoding amino acid 12 (Bos 12) which is complementary to at least
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