Appeal 2007-2542
Application 10/623,891
recombinant MDV agent derived from one CVI988 strain would be
characteristic of all the recombinant agents that are covered by the claim.
Thus, even were enhanced replication a property of a particular species
within the scope of claim 1, Appellants have not provided evidence that all
recombinant MDV agents in the scope of claim 1 would possess this
property.
Appellants assert that Witter ’97 recognized that the RM1 mutant
conferred a high level of protection against MDV, but “admitted that the
reason or mechanism for the increase in protection was unknown” (Appeal
Br. 9). Thus, Appellants argue that there would have been no reasonable
expectation of success that LTR insertion would lead to vaccine efficacy in
other MDV strains (Appeal Br. 9).
Witter ’97 acknowledges that it “cannot be definitively established”
from their results that the properties of RM1 resulted from the insertion of
the REV LTR into the unique upstream position in RM1’s MDV genome
(Witter ’97, at 418). However, Witter ’97 states that “this possibility is
supported” by experimental evidence about how the insertion affected RM1
transcription (Witter’ 97, at 418). Thus, while it is not certain that LTR
insertion was responsible for the improved the properties of RM1, Witter ’97
clearly recognized from their experimental findings that it was probable.
Consequently, persons of skill in the art would have reasonably expected
that other MDV strains would similarly benefit from insertion of the REV
LTR at the same site as in RM1. For obviousness under § 103, all that is
required is a reasonable expectation of success, not absolute predictability of
success. In re O’Farrell, 853 F.2d 894, 903, 7 USPQ2d 1673, 1681 (Fed.
Cir. 1988). Moreover, by describing RM1 as a “model for future vaccines”
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