Appeal No. 1997-0093
Application No. 08/157,562
THE REJECTION UNDER 35 U.S.C. § 103:
The initial burden of presenting a prima facie case of obviousness rests on
the examiner. In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed.
Cir. 1992). In meeting this initial burden, it is well-established that before a
conclusion of obviousness may be made based on a combination of references,
there must have been a reason, suggestion or motivation to lead an inventor to
combine those references. Pro-Mold & Tool Co. v. Great Lakes Plastics, Inc., 75
F.3d 1568, 1573, 37 USPQ2d 1626, 1629 (Fed. Cir. 1996).
The examiner finds (Answer, bridging paragraph, pages 4-5) that:
It would have been obvious to one of ordinary skill in the art at
the time the invention was made to introduce disulfide bonds as
taught by Kim et al. in the library of Houghten et al. because Kim et al.
teach that dimeric peptides are more conformationally stable at
physiologic pH and such synthetic ligands are especially useful in
investigating protein binding sites and may be used as artificial
proteins in a therapeutic context. … In addition, it would have also
been prima facie obvious … to place the mercaptan containing
residue, such as cysteine at any position along the peptide chain
because this would also expand the diversity of the peptide library.
With respect to both the first oligopeptide portion and the second
oligopeptide mixture portion, claim 1 requires, inter alia, for each portion the
“oxidized mercaptan-containing residue is the only mercaptan-containing residue in
the chain.”
We find nothing in Houghten I, or Houghten II, nor does the examiner identify
a teaching, that specifically excludes the presence of more than one mercaptan-
containing residue in a chain. In fact Houghten II clearly illustrates (page 123,
line19) the occurrence of two cysteine residues in the same chain as “RRWWCC.”
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