Appeal No. 1997-0100
Application 08/167,051
Krapcho also concerns ACE inhibitors and teaches that “analogues of . . . inhibitors
with hydrophobic substituents on proline were more potent in vitro than the corresponding
unsubstituted proline compounds” (Abstract). Given the different functions and effects of
ACE inhibitors and bradykinin antagonists, we see nothing in this reference that suggests
anything, negative or positive, about the consequences of including hydroxyproline ether or
thioalkyl ether substituents in bradykinin antagonists.
We have no doubt that the prior art could be modified in a manner consistent with
appellants’ specification and claims, but the fact that the prior art could be so modified
would not have made the modification obvious unless the prior art suggested its
desirability. In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984).
Here, we find no reason or suggestion stemming from the prior art which would have led a
person having ordinary skill to the claimed method. In our opinion, the only reason or
suggestion to combine the references in the manner proposed by the examiner comes
from appellants specification. Accordingly, we find that the examiner’s initial burden of
establishing a prima facie case of obviousness has not been met.
The rejection of claims 5 through 17, 21, 22, 41 and 42 under 35 U.S.C. § 103 is
5
reversed.
5Having determined that a prima facie case of obviousness has not been
established, we find it unnecessary to comment on appellants’ arguments regarding the
unexpected properties of the claimed antagonists (Brief, pages 24 through 26).
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