Appeal No. 1996-3434
Application No. 08/063,279
libraries are not claimed here.@ The examiner=s statement of the rejection addresses
the side chains by stating:
It would have also been obvious that such libraries would
have the carboxamide groups replaced by aminomethyl
groups, carboxyl groups replaced by hydroxymethyl, and
guanidino groups replaced by amino groups, because one
of ordinary skill would have also expected these groups to
be reduced by the reductants and procedures which are
well known and routine in the art, as one would not be
concerned with trying to maintain the structure and activity
of a parent peptide.
See, Answer, page 6.
We have no doubt that the prior art could be modified in a manner consistent
with appellants’ specification and claims. That the prior art could be so modified,
however, would not have made the modification obvious unless the prior art suggested
the desirability of the modification. In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125,
1127 (Fed. Cir. 1984). What is lacking from the examiner=s treatment of the claims on
appeal is a reason, suggestion or motivation, stemming from the prior art, which would
have led a person having ordinary skill to the claimed invention wherein Athe
carboxamide groups of said reduced amino acid side chains are replaced by
aminomethyl groups, carboxyl groups of said reduced amino acid side chains are
replaced by hydroxymethyl groups, and quanidino groups of said reduced amino acid
5
Page: Previous 1 2 3 4 5 6 7 8 Next
Last modified: November 3, 2007