Appeal No. 2007-1140
Application No. 10/753,729
Analysis
Cuthbertson teaches RGD peptide-based compounds for use as
diagnostic imaging agents (1: 4-6). To accomplish the imaging function, the
compounds contain a reporter at either end of the peptide (16: 5-6). In
addition to the reporter, the peptide can also contain a moiety
(“biomodifier”) for “modifying the pharmacokinetics or blood clearance
rates” of the compound (7: 18-20; 8: 30-32), also at either end of the
compound (id.). The examples show compounds with a biomodifier and
reporter at the C-terminus (e.g., at 38, compound 1d); and the biomodifier at
the N-terminus and reporter at the C-terminus (e.g., at 48, compound 4d).
There are only a small number of possible configurations of a peptide-based
compound with C- and/or N-terminal reporter and biomodifier moieties as
generally described in Cuthbertson. The claimed compound, which
represents one of these limited configurations, would be straightforwardly
envisioned by the skilled worker in view of Cuthbertson’s general formula I,
its specific examples (e.g., compound 4d), and the teachings of Hart and
Dean that functional groups can be located at any suitable position of an
RGD peptide. A reference must be “considered in its entirety for what it
fairly suggests to one skilled in the art.” In re Hedges, 783 F.2d 1038, 1039,
228 USPQ 685, 687 (Fed. Cir. 1986). In our view, Cuthbertson would have
reasonably suggested to the skilled worker a RGD peptide having a reporter
at its N-terminus and a biomodifier at its C-terminus as required by claim 1.
Obviousness also requires a reasonable expectation of success. In re
Vaeck, 947 F.2d 488, 493, 20 USPQ2d 1438, 1443 (Fed. Cir. 1991).
Cuthbertson’s teaching that reporter and biomodifier moieties can occupy
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