Ex parte HERSHENSON - Page 7

                 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                                    
                          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                                           


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