Appeal No. 2001-1586 Page 6
Application No. 08/402,394
The examiner points out at page 5 of the Examiner’s Answer4 that the generic structural
formula of the insulin precursors does encompass the compound of claim 33 if X is Thr,
n is 1 and Y is Arg.
While not explicitly stated in the Examiner’s Answer, we believe the examiner
was aware of cases such as In re Baird, 348 F.2d 974, 29 USPQ2d 1550 (Fed. Cir.
1994) and In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992) that stand for
the proposition that disclosure of a chemical genus does not necessarily render obvious
any species that happens to fall within that genus. Thus, the examiner articulates a
so-called motivation why one of ordinary skill in the art would select the compound of
claim 33 from the genus of proinsulin compounds described in Markussen ‘212.
The examiner’s motivation to do so involves the description in Grau ‘332 that “the
derivative insulin-ArgB31-OH in crystalline form is exceptionally stable to further tryptic
degradation.” Grau ‘332, column 2, lines 10-12. We believe the examiner’s position is
that once one of ordinary skill in the art understands that insulin-Arg B31-OH is a desired
insulin derivative, that hypothetical person would also understand from reading the
generic disclosure of the proinsulin compounds described in Markussen ‘212 that the
species of that genus wherein X is Thr, n is 1 and Y is Arg may be cleaved by trypsin
and thus produce the desired insulin-Arg B31-OH. In our view, the examiner’s position is
based upon impermissible hindsight.
We must view the applied prior art and the examiner’s stated reasons for
combining the references apart from appellants’ disclosure of the present invention
4 The pages of the Examiner’s Answer are misnumbered. Pages 1 and 2 are correctly numbered while
page 3 contains no page number and page 4 is stated to be page number 2 with that mistake continuing
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