Appeal No. 2001-1586 Page 12
Application No. 08/402,394
understand appellants’ position to be that with appropriate selection of variables,
Markussen ‘212 does not literally describe the compound of claim 33. Rather,
appellants would have the disclosure ignored or wished away by analyzing the
arguments made on behalf on Markussen in procuring the patent.
If the examiner determines that Markussen ‘212 describes the compound of
claim 33, the examiner should revisit the issue of the patentability of the method claims
pending in this application. It may be that once it is determined that Markussen ‘212
contains a sufficiently specific description of the compound of claim 33 so as to be
anticipatory, a person of skill in this art focused on that compound would understand
that due to its amino acid sequence, the compound is amenable to tryptic cleavage in
order to form insulin-ArgB31-OH which Grau ‘332 describes as possessing beneficial
properties.
REVERSED
William F. Smith )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
Toni R. Scheiner )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
Donald E. Adams )
Administrative Patent Judge )
5 We take no position on appellants’ arguments based upon the prosecution history of Markussen ‘212 in
regard to their accuracy or correctness.
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