Appeal No. 1995-4623
Application No. 07/918,588
the only reason, suggestion, or motivation to arrive at those cyclized pentapeptides stems
from appellants' specification and not from the cited prior art. It follows, in our judgment,
that the rejections under 35 U.S.C. § 103 are based on the impermissible use of hindsight
and cannot stand. The rejections under 35 U.S.C. § 103 are reversed.
SECTION 102(f)
Claims 1 through 3 stand rejected because, according to the examiner, applicants
themselves did not invent the subject matter sought to be patented. 35 U.S.C. §
102(f). In setting forth this rejection, the examiner (1) cites the O'Connor publication
entitled "Quenched Molecular Dynamics Simulations of Tuftsin and Proposed Cyclic
Analogues"; and (2) refers to O'Connor's description of ctuf (cyclo[Thr-Lys-Pro-Arg-Gly])
2
at page 2878 second column and ctuf (cyclo[Thr-Lys-Pro-Arg-Asp]) at page 2879 second
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column. According to the examiner, the peptides recited in claims 1 through 3 are
identically described in the O'Connor publication which is co-authored by two of the
present inventors (Fahad Al-Obeidi and Montgomery Pettitt) and two others. The examiner
argues that this set of
facts "raises a question of inventorship" and that, in the absence of a satisfactory showing,
it is unclear whether "the inventorship of the application has been properly
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