Appeal No. 2003-1722 Page 10
Application No. 09/041,343
Similarly, the claims require that the “-O-, -NH- or –C=O to which an
oligomer is attached form[s] an amide, urea, urethane, sulfonamide or ester bond
with said oligomer.” The examiner argues, as we understand it, that this claim
limitation does not require the recited -O-, -NH- or –C=O groups to form part of
the amide, etc. bond. See the Examiner’s Answer, page 18. We disagree. The
claims expressly state that the “-O-, -NH- or –C=O . . . form[s] an amide, urea,
urethane, sulfonamide or ester bond with said oligomer.” The most reasonable
interpretation of the claims is that the -O-, -NH- or –C=O moiety forms part of the
amide, etc. bond by which the oligomer is attached to the template. The proline-
containing peptides disclosed by Taddei-Peters do not meet this limitation. Since
the claims do not read on the peptides disclosed by Taddei-Peters, they are not
anticipated by them.
The examiner rejected claims 112, 117, and 125 as anticipated by Lebl,
on the basis that Lebl discloses “libraries of synthetic test compounds”
comprising subunits meeting the “template” and “oligomer” limitations of the
instant claims; the examiner pointed specifically to Lebl’s compounds 2-5, 7, 11,
12, 14, and 15 as meeting the limitations of the instant claims. See the
Examiner’s Answer, pages 10-12.
Appellants argue that, at best, Lebl discloses generic scaffold/subunit-
comprising compounds that do not anticipate because the disclosure is not
specific enough to allow a person skilled in the art to envisage any specific
compounds within the scope of the present claims. See the Appeal Brief, pages
19-20. Appellants conclude that “[n]one of the scaffold/subunit combinations
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 Next
Last modified: November 3, 2007