Appeal 2007-2956
Application 10/677,733
core that has no NMR-apparent a priori formed ligand cavity.” When the
Patent Office has reason to believe that a functional limitation asserted to be
critical for establishing patentability is possessed by the prior art, “it
possesses the authority to require the applicant to prove that the subject
matter shown to be in the prior art does not possess the characteristic relied
on.” In re Swinehart, 439 F.2d 210, 212-13, 169 USPQ 226, 228-29 (CCPA
1971). See also In re Best, 562 F.2d 1252, 1254-55, 195 USPQ 430, 433-34
(CCPA 1977); In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658
(Fed. Cir. 1990). Thus, the issue in this appeal is whether there is a
reasonable basis for believing that the prior PAS domain proteins meet the
claimed limitation of “the PAS domain is predetermined, prefolded in its
native state, and comprises a hydrophobic core that has no NMR-apparent a
priori formed ligand cavity.”
In explaining the reason for the presumption that the prior art meets
this claim limitation, the Examiner states:
The linear amino acid sequence contains all the information
required for proper folding of the protein to predetermined
three-dimensional structure including any binding cavity
required for its activity. Proteins are known to instantaneously
fold during their biosynthesis. All folded proteins have
hydrophobic core otherwise the protein would not fold.
(Answer 6.) Thus, the Examiner clearly states a reasonable basis for
presuming that the PAS domain is in a “predetermined, prefolded in its
native state, and comprises a hydrophobic core” as recited in claim 1.
Appellants have not identified a defect in this reasoning, and we find none as
it accurately reflects the knowledge of persons of ordinary skill in the art.
The claim further requires that the PAS domain “has no NMR-
apparent a priori formed ligand cavity.” We acknowledge that none of the
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