Ex Parte Cuthbertson et al - Page 9

                Appeal No. 2007-1140                                                                         
                Application No. 10/753,729                                                                   

                either the N- or C-termini of the peptide component provides evidence that                   
                the skilled worker would have reasonably expected that the claimed                           
                compound, with the reporter at the N-terminus and the biomodifier at the C-                  
                terminus, to have retained its activity as a diagnostic imaging agent.  This is              
                buttressed by Hart and Dean, both which teach that functional groups (e.g..,                 
                a polycation or radioactive reporter) can be incorporated at any position of                 
                the RGD peptide without affecting its binding or functional activity.                        
                      In view of the foregoing, we find sufficient evidence to establish a                   
                prima facie case of obviousness.  Because our reasoning differs from the                     
                Examiner’s, we designate this as a new ground of rejection under                             
                37 C.F.R. § 41.50(b) to provide Appellants with an opportunity to respond.                   
                      Appellants argue:                                                                      
                      ķAlso, in Cuthbertson, the examples teach attachments of the                           
                      reporter to the C-terminal end of the peptide X8 and                                   
                      biomodifier at the N-terminal end at X1. The present invention,                        
                      however, specifies that the positioning of the biomodifier is at                       
                      the C-terminal end X7, and X8 is absent.                                               
                (Reply Br. 4)                                                                                
                      We do not find that this distinguishes the claimed invention from                      
                Cuthbertson.  In Cutherbertson, the reporter moiety (X8) is attached to the                  
                C-terminus by a spacer moiety (X7) (7: 1-5; 8: 24-27; 9: 10-15).                             
                Cuthbertson’s configuration is flipped in instant claim 1, where the reporter                
                moiety is attached to the N-terminus by a spacer moiety (i.e., the “linker” of               
                Cutherbertson) W1.  In this case, the instant claim preserves the entire                     
                reporter structure by lifting the linker and reporter from the C-terminus of                 
                Cutherbertson, and attaching them to the N-terminus of the same peptide                      
                component.                                                                                   

                                                     9                                                       

Page:  Previous  1  2  3  4  5  6  7  8  9  10  11  12  13  14  15  Next

Last modified: September 9, 2013