Prior art prophetic example renders claims obvious in Ex parte LEVEUGLE
The compounds at issue in Ex parte LEVEUGLE are hypocrellins, which are perylene derivatives used in photodynamic therapy (PDT) cancer treatment.
Within the case, a prophetic example in one application [ Fanslow III et al., US 2002/0041864 A1, Apr. 11, 2002. ] is used AGAINST another application (10/470,519 ).
The appellant argued:
Appellant argues that the procedures in Fanslow’s Example 2 “are merely a wish list of experimental protocols that could be utilized.... Such wish list is certainly insufficient to support an inference that one of skill in the art would regard such therapy as useful or efficacious.” (Id.)
Of appellant's argument against this use, the Board noted:
This argument is also unpersuasive. Fanslow expressly discloses that “[c]ombining PDT with administration of a CD40 binding protein should significantly enhance the in vivo anti-tumor immune response” (FF 6) and that a CD40 binding antibody is a suitable CD40 binding protein (FF 4). “[A] presumption arises that both the claimed and unclaimed disclosures in a prior art patent are enabled.” Amgen, Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1355 (Fed. Cir. 2003).
Nor has Appellant provided evidence or sound reasoning to show that a skilled worker would not have expected Fanslow’s treatment method to be effective, notwithstanding the fact that Fanslow did not actually carry out the treatment in vivo. See In re Kumar, 418 F.3d 1361, 1368 (Fed. Cir. 2005) (Patent applicants bear the burden of “presenting sufficient reason or authority or evidence, on the facts of the case, to show that the prior art method would not produce or would not be expected to produce the claimed subject matter.”).