Appeal No. 2004-1259
Application No. 09/832,355
Thus, we agree with the examiner that Gill and Rockwell provide motivation to
substitute VEGF tumor markers for the EGF tumor marker of Yoon in the cytotoxic
fusion protein of Yoon for the purpose of treating KS and glioblastoma.
We acknowledge that the appellants' motivation for preparing the claimed fusion
protein is to produce a final end product which promotes angiogenesis and/or wound
healing. However, appellants should also keep in mind, that the so-called motivation to
combine references does not have to be identical to the appellants' to establish
obviousness. In re Kemps, 97 F.3d 1427, 1430, 40 USPQ2d 1309, 1311 (Fed. Cir.
1996). Therefore, the fact that Yoon combines two angiogenesis promoting peptides to
effect cellular cytotoxicity is of no consequence, as Yoon provides an alternative
motivation for combination with Gill and Rockwell.
Moreover, we do not find any argument or evidence put forth by appellants
establishing that VEGF, a tyrosine kinase receptor similar to EGF, would not be
internalized into the cell or function in the same manner as EGF, as described in the
fusion protein of Yoon.
After evidence or arguments are submitted by the appellant in response to
rejection based on obviousness, patentability is determined on the totality of the record,
by a preponderance of evidence with due consideration to persuasiveness of the
argument. On balance, we believe that the totality of the evidence presented by the
examiner and appellants weighs in favor of finding the claimed invention is obvious in
view of the combination of Yoon with Gill and Rockwell. The rejection of claims 1-5, 9,
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