Appeal 2007-1614
Application 09/779,447
tunicamycin damaged brain microvessels. However, Tiganis explicitly
discloses that tunicamycin-treated animals suffered “damage to brain
microvessels” (Tiganis 199, right column). Thus, even taking into account
Tiganis’ lack of certainty regarding the precise mechanism of tunicamycin’s
effects in vivo, Tiganis’ disclosure that the compound damages brain
microvessels would, in our view, have discouraged administering it to
patients.
The Examiner argues that the in vitro data presented in Banerjee and
Tiganis is sufficient to that the claimed in vivo methods would have been
prima facie obvious (Answer 5). The Examiner urges that “[w]hile a
demonstration of in vivo use . . . is not absolutely required to support claims
thereto, it is clear that [Appellants’] disclosure uses in [v]itro data to support
the inhibition of angiogenesis while contending that the same use of in vitro
data in the prior art is not correlative” (id.).
Appellants respond that “[w]hile the examiner criticizes the amount of
in vivo data included in the specification, there are no rejections under 35
U.S.C. § 101 or 112” (Reply Br. 3).3 Appellants urge that “[t]he only issue
in this application is whether the prior art fairly teaches the use of
tunicamycin to treat angiogenesis in a patient as set forth in the claims” (id.).
We agree with Appellants that the issue before us is whether the cited
references render the claimed method prima facie obvious, not whether the
Specification enables the claimed method. Because Tiganis discloses that
tunicamycin has adverse effects when administered in vivo, we conclude that
one of ordinary skill would not have considered it obvious to administer the
3 Reply Brief filed November 8, 2006.
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