Appeal No. 1997-4379
Application No. 08/278,437
…
One skilled in the art would therefore, have not likely deemed applicants
mere statements or the method for making a single peptide as predictive
or conclusive for all or any disulfide containing compounds especially in
view of the known unpredictability in the peptide art.
Therefore, in the examiner’s opinion the specification fails to adequately teach
how to use the claimed compounds because "[n]o data has been provided in the spec.
to show that such modification [of the disulfide bond] did not result in the destruction of
the peptide bioactivity but rather in the stability of the modified compound in a
biological system" (Examiner's Answer, paragraph bridging pages 4 and 5). In other
words, it would require undue experimentation to use the claimed compounds for the
intended purpose of "diagnosis and therapy" (Specification, page 1).
In response to the examiner’s position, appellants argue that "[a]n assertion by
the Patent and Trademark Office that the enabling disclosure is not commensurate in
scope with the protection sought in the Claims must be supported by evidence or
reasoning substantiating the doubts so expressed" (citations ommitted )(Appeal Brief,
page 4). Specifically, appellants state that "[t]he Examiner's statements that the
claimed analogs would encompass "myriads" of amino acids is not evidence nor would
such assertions be reasoning sufficient to support a rejection of the present Claims"
(Appeal Brief, page 5). According to appellants, the compounds encompassed by the
claims "are well within the level of skill in the art" (id.).
In support of this position, appellants rely on Blake, Belinka and Edwards, to
exemplify "the state of the art with respect to amino acid chemistry" (id.). These
references allegedly teach methods of making peptides of 7, 50 and even 100 amino
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