Appeal No. 94-3007
Application 07/809,039
. . . [D]ue to the close structural similarity and
closeness of relationship of the isomers it is expected
that they would possess very close properties . . . .
Next, the examiner states (Examiner’s Answer, pages 4-5,
bridging paragraph):
The compound of claim 30 differs from the compound
of the prior art in that the claimed compound is drawn
to an anhydrous form of the peptide, as opposed to the
prior art hydrated compound. Such difference however
would have been obvious to one of ordinary skill in the
art at the time the invention was made since the claimed
anhydro compound, a transpeptidation reaction
intermediate
between the parent compound and the claimed isomer, is
the
sole pathway to the formation of an aspartyl isomer
product.
(Note the Bodansky [sic, Bodanszky] reference at pp. 336-
338, submitted by appellants.) Also, note the suggested[2]
2 Bodanszky et al. (Bodanszky), “Side Reactions in
Peptide Synthesis,” Synthesis 1981, pages 333-338, 351-356
(May 1981), was first cited by applicants in their Information
Disclosure Statement filed May 4, 1988 (Paper No. 3). First,
we note that the examiner did not mention Bodanszky in the
statement of the rejection. See
In re Hoch, 428 F.2d 1341, 1342 n.3, 166 USPQ 406, 407 n.3
(CCPA 1970)(“Where a reference is relied on to support a
rejection, whether
or not in a ‘minor capacity,’ there would appear to be no
excuse
for not positively including the reference in the statement of
the rejection.”) Second, Bodanszky appears to be providing
peptide chemists with notice of problem side reactions and
undesirable
by-products which they must always consider. Bodanszky
appears to lead skilled artisans away from the side reactions.
Third, while Bodanszky does teach that the Asp residues are
susceptible
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