Appeal No. 2004-1505 Page 8
Application No. 09/016,743
it may, we have considered Dr. Shin’s declaration on the basis that the facts are as
stated but do not find that it is a sufficient rebuttal of the obviousness rejection.
At best, Dr. Shin’s declaration sets forth the considerations a person of ordinary
skill in the art would have in determining whether a chimeric molecule that is to bind to a
tumor cell associated antigen should be premised upon a complete antibody or a
single-chain Fv fragment. Clearly, there are pros and cons for using each type of
antibody moiety. In fact, a person following the teachings of Hölzer would face the
same considerations since Hölzer states that the antibody portion of that chimeric
molecule may be a complete antibody as required by claim 1 on appeal or an antibody
fragment including a single-chain Fv fragment as in Huston. See the constructs
illustrated in Fig. 1 of Hölzer. Thus, the considerations set forth by Dr. Shin in the
declaration are only those that one seeking to implement the disclosure of Hölzer would
have. Presumably a person of ordinary skill in the art at the time of the present
invention would have had sufficient skill in order to make an informed decision as to
whether a chimeric molecule according to Hölzer should be based upon a complete
antibody as claimed or a single-chain Fv fragment. The Shin declaration does not
address the main issue in this rejection, i.e., whether it would have been obvious to
couple IL-8 to the N terminus of the antibody of Hölzer, rather than the C terminus with
a reasonable expectation of successfully obtaining a chimeric molecule that will bind to
a tumor associated antigen and possess IL-8 activity.
In regard to the separate rejection of claims 1 and 9 on the basis of Huston,
Bacus, and Hölzer, we note that appellants rely upon the same arguments made in
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