Appeal No. 95-2662
Application 07/771,262
Boime, a reference which discloses, inter alia, the addition of a C-terminal extension
comprising from about amino acid residues 112-118 through 145 of human chorionic
gonadotropin to follicle-stimulating hormone (FSH) and to luteinizing hormone (LH).
The examiner acknowledges that the Boime reference differs from the claimed
invention in that only a single CTP extension is used rather than two or more tandem CTP
extensions. Answer, p. 4, first complete para. The examiner argues, however, that :
The ‘800 [Boime] publication discloses the extensive O-linked glycosylation
as being responsible for the increased half-life of the protein. Given this, it would
have been obvious to one of ordinary skill in the art that further increasing the level
of glycosylation would be reasonably expected to further decrease plasma
clearance, and that a reasonable way to achieve this would [be] by reiteration of the
CTP peptide bearing glycosylation sites. [Answer, p. 4, para. 2].
We find the examiner’s position untenable.
It cannot be gainsaid that the examiner has the initial burden under 35 USC § 103
of presenting a prima facie case of obviousness. In re Piasecki, 745 F.2d 1468, 1471-
72, 223 USPQ 785, 787-88 (Fed. Cir. 1984). Before a conclusion of obviousness can be
made based on a single reference, or a combination of references, there must have been
a reason, motivation or suggestion in said reference(s) to make the claimed invention.
Pro-Mold & Tool Co. V. Great Lakes Plastics, inc., 75 F3.d 1568, 1573, 37 USPQ2d
1626, 1629 (Fed. Cir. 1996); In re Ochiai, 71 F3.d 1565, 1570,
37 USPQ2d 1127, 1131 (Fed. Cir. 1995)(“The mere chemical possibility that one of those
prior art acids could be modified such that its use would lead to the particular cephem
recited in claim 6 does not make the process recited in claim 6 obvious ‘unless the prior
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