Interference No. 104,761 Paper108
Univ. of New Mexico v. Fordham Univ. Page 4
The prior art UNM cited suggests that an ADP substrate could be
substituted for the ATP substrate in the method of Welch 1985 if one
seeks to isolate hsp-protein complexes. The motivation for the
modification, however, hinges on the desirability of making hsp-protein
complexes. "The mere fact that the prior art could be so modified would
not have made the modification obvious unless the prior art suggested the
desirability of the modification." In re Gordon, 733 F.2d 900, 902,
221 USPQ 1125, 1127 (Fed. Cir. 1984). Without a motivation to make
such complexes, the fact that it could be done is academic. What
motivation there is appears to come from the work of one of Fordham's
inventors and was not cited by UNM against Fordham.
Moreover, it is not clear why a person having ordinary skill in the art
would [have] expect[ed] the substitution to work. After all, Welch 1985
emphasized that its method isolated heat-shock proteins in their native
form. Palleros, using a different method, found that adding AIDP to (or
substituting it for ATP in) the mobile phase of the chromatography system
had the effect of stabilizing the complex much more than ATP alone.
Assuming that a person having ordinary skill in the art had motivabon to
isolate hsp-protein complexes, the combined teachings of Welch 1985
and Palleros provide an experiment to try rather than a reasonable
expectation of success. See In re Dow Chemical Co., 837 F.2d, 469, 473,
5 USPQ2d 1529, 1532 (Fed. CiL 1985) (rejecting an "obvious to
experiment" approach).
[5] In requesting reconsideration of the decision, UNM cites two Fordharn exhibits
(Paper 100 at 11, citing Fordham exhibit 10192, and at 12, citing 10183) and the
characterization of the pdor art in UNM's 332 patent [2066].
[6] UNM stated its characterization of the prior art in its 332 patent as a material fact (UNM
Prel. Mot. 2 at 4, Fact 2).
[7] Fordham denied that characterization (Fordham Opp. 2 at 3).
2 H. Udono & P.K. Srivastava, "Heat Shock Protein 70-associated Peptides Elicit Specific Cancer
Immunity", 178 J. Exp. Med. 1391 (1993).
3 N.E. Blachere at al., "Heat Shock Protein Vaccines Against Cancer", 14 J. Immunol. 352 (1993).
Fordham's named inventor, Pramod K. Srivastava, is a co-author.
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