Appeal No. 2005-0410
Application No. 09/902,461
or suggestion in the applied prior art, or knowledge generally available [in the art] would
have led one of ordinary skill in the art to combine the references to arrive at the
claimed invention. Pro-Mold & Tool Co. v. Great Lakes Plastics, Inc., 75 F.3d 1568,
1573, 37 USPQ2d 1626, 1629 (Fed. Cir. 1996). Moreover, the applied prior art must
not only contain a suggestion to arrive at the claimed invention, but it must also provide
evidence indicating that it would be successful. In re Eli Lilly & Co., 902 F.2d 943, 945,
14 USPQ2d 1741, 1743 (Fed. Cir. 1990); In re O’Farrell, 853 F.2d 894, 903, 7 USPQ2d
1673, 1681 (Fed. Cir. 1988).
We have carefully considered Fuller’s statement that “we believe it [human acid
"-glucosidase] will be a useful candidate for replacement therapy in GSD II patients,”
but find that given the teachings of the reference, it presents the type of “obvious to try”
situation our appellate reviewing court has cautioned against. In re Eli Lilly & Co., 902
F.2d at 945, 14 USPQ2d at 1743; In re O’Farrell, 853 F.2d at 903-04, 7 USPQ2d at
1681. That is, Fuller discloses the production of human acid "-glucosidase in CHO
cells and the importance of mannose 6-phosphate (Man6P) groups on the enzyme for
efficient cellular uptake via the Man6P receptor. Fuller, p. 903, col. 2. Fuller further
discloses that the recombinant enzyme is efficiently endocytosed by in vitro cultures of
fibroblasts and muscle cells derived from GSD II patients. Id., p. 906, col. 2- p. 908, col.
1, line 2. However, Fuller does not disclose the administration of the recombinant
enzyme to art-recognized animal models, or suggest any administration protocols for
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