Appeal No. 1997-4379
Application No. 08/278,437
examiner's position with respect to Rivier serves as evidence that appellants'
modification of the disulfide bond destroys the bioactivity of the peptide.
All in all, we conclude that appellants' specification provides sufficient knowledge
and guidance to enable any person skilled in the art to make and use the claimed
invention without resorting to undue experimentation. In view of the foregoing, we
believe that the examiner has not established that claims 1 through 5 and 14 through
18 are based on a non-enabling disclosure. The examiner’s reliance on Mather and
Rivier is not sufficient to support the conclusion that the modified sulfide bond would not
serve the analogous function of the disulfide bond; that is, that the peptide with the
modified sulfide bond would not retain its bioactivity.
Accordingly, the rejection under 35 U.S.C. § 112, first paragraph, is reversed.
Rejection under 35 U.S.C. § 103:
Claims 1 through 5 and 14 through 18 stand rejected under 35 U.S.C. § 103 as
unpatentable over Dean in view of anyone of Edwards or Jost.
We note that this rejection is different from the rejection under 35 U.S.C. § 103
advanced in the Final office action entered October 11, 1996 (Paper No. 10). In the
Final office action, the examiner rejected only claim 1 under 35 U.S.C. § 103 as
"unpatentable over Lyle et al in view of Dean et al and anyone of Edwards et al or Jost"
(Paper No. 10, page 5). On page 2 of the examiner's answer, the examiner withdrew
"the rejection of the claims over Lyle." In its place, the examiner now advances a
rejection under 35 U.S.C. § 103 affecting all the claims pending under appeal with Dean
replacing Lyle as the primary reference (Examiner's Answer, page 7). This rejection is
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