Appeal No. 2005-0410
Application No. 09/902,461
report any differences. To the contrary, Bivjoet discloses that the recombinant enzyme
produced in milk (transgenic mice) and CHO cells had similar activity in both in vitro and
in vivo assays. Bijvoet, p. 1819, col. 2, last sentence; p. 1822, col. 1,
paras. 3-4. Thus, Bijvoet concludes that
Altogether, the production of recombinant human acid "-glucosidase in
the mammary gland of transgenic animals seems a good alternative to
production by CHO cells because of lower intrinsic costs and similar therapeutic
potential. Guided by these positive results, we have started large-scale
production of recombinant acid "-glucosidase in the milk of transgenic rabbits
[emphasis added] [Bivjoet, p. 1822, col. 1, para.5].
We do not find that given these teachings, one of ordinary skill in the art would have
been motivated to employ the human acid "-glucosidase taught by Fuller (i.e., the
enzyme produced in CHO cells). To the contrary, we find that Bijvoet would have, at
best, suggested the use of the recombinant enzyme produced in transgenic mice to
treat GSD-II patients. On this record, the only suggestion we find to pursue claimed
methods of treating GSD-II patients using the enzyme produced in CHO cells and
administering said enzyme “periodically at adminstrative intervals” is in the appellant’s
disclosure. Thus, we find that the examiner has engaged in impermissible hindsight to
arrive at the conclusion that the claimed invention would have been obvious over Bijvoet
and Fuller. In re Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780, 1784 (Fed. Cir. 1992);
Interconnect Planning Corp. v. Feil, 774 F.2d 1132, 1138, 227 USPQ 543, 547 (Fed.
Cir. 1985); W.L. Gore & Assocs. v. Garlock, Inc., 721 F.2d 1540, 1553, 220 USPQ 303,
312-313 (Fed. Cir. 1983) cert. denied 469 U.S. 851 (1984)(“To imbue one of ordinary
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