Appeal No. 1997-0093
Application No. 08/157,562
Similarly, we find nothing, and the examiner fails to identify, a suggestion in Kim that
only one disulfide bond be present in the dimer. Kim states (page 13, lines 11-14)
that “[b]onding of the two units will generally be covalent in nature and, in particular,
will be disulfide bonding (between at least one cysteine residue on each of the
peptide units)” [emphasis added]. Thus, Kim contemplates the presence of more
than one mercaptan residue in a chain.
While a person of ordinary skill in the art may possess the requisite
knowledge and ability to modify the Houghten oligopeptides, the modification is not
obvious unless the prior art suggested the desirability of the modification.
In re Gordon, 733 F.2d 900, 902, 211 USPQ 1125, 1127 (Fed. Cir. 1984). Here,
the examiner has provided no reason or suggestion to modify the prior art to obtain
the claimed dimeric oligopeptide mixture wherein only one oxidized mercaptan-
containing residue is present in a chain.
On these facts, we are constrained to reach the conclusion that the examiner
has failed to provide the evidence necessary to support a prima facie case of
obviousness. Where the examiner fails to establish a prima facie case, the
rejection is improper and will be overturned. In re Fine, 837 F.2d 1071, 1074, 5
USPQ2d 1596, 1598 (Fed. Cir. 1988).
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