Appeal No. 1997-2133
Application 08/172,507
and amino acids, such as asparagine, glucine and lysine for protein stabilization, since these
were taught to be ineffective in stabilizing thymopentin protein. Audhya, page 7, lines 3-10.
Our reviewing court in In re Gurley, 27 F.3d 551, 553, 31 USPQ2d 1130, 1131 (Fed.
Cir. 1994) stated:
[a] reference may be said to teach away when a person of ordinary skill, upon
[examining] the reference, would be discouraged from following the path set out in the
reference, or would be led in a direction divergent from the path that was taken by the
applicant.
It would appear that persons of skill in the art may have been equally encouraged and
discouraged from following the paths of the cited references. In this respect it would appear
that there is some level of unpredictability in the relevant art.
Thus, appellant takes issue with the argument of the examiner that the addition of
amino acids, alone or together for stabilization purposes would have been recognized as
broadly applicable to any protein. Appellant argues that the peptides of Morimoto (urokinase),
Lee (factor VIII) and Audhya (thymopentin) are fundamentally different than the claimed stem
cell factor protein. It would appear on second review, that the cited references give no
indication of which parameters are critical and no direction as to which of many possible
7
Page: Previous 1 2 3 4 5 6 7 8 9 10 Next
Last modified: November 3, 2007