Appeal No. 1997-2518
Application 08/359,642
known in the art at the time of the invention, does not satisfy the enablement
requirement of 35 U.S.C. § 112.
Finally, to the extent that the examiner requires an assurance of certainty
(“[t]here is insufficient bioassay data provided . . . which teaches that all of the possible
Bk analogs would be effective as antagonist,” (Examiner’s Answer, page 3)) to
demonstrate enablement, we note that no legal authority has been cited in support of
this requirement. On the contrary, a requirement for certainty would be incompatible
with any experimentation at all.
Accordingly, the rejection of claims 1, 2, 4 and 5 under 35 U.S.C. § 112, first
paragraph is reversed.
Obviousness
Claims 1, 2, 4 and 5 stand rejected under 35 U.S.C. § 103, as unpatentable over
Henke, Hock and Patchett.
Henke and Hock disclose bradykinin antagonists which “differ[] from the claimed
peptide in that the claimed peptide has a hydroxyproline ether derivative at position
seven [of native bradykinin] . . . as opposed to Henke’s or Hock’s D-Tic residue”
(Examiner’s Answer, page 7).4
According to the examiner, Patchett “suggest[s] or teach[es] that the
heterocycles hydroxyproline ether or thio ether derivative and Tic are known in the art to
be equivalent,” and further, Henke suggests “the functional equivalence of said
4 Tic is the abbreviation for 1,2,3,4-tetrahydroisoquinoline-3-ylcarbonyl.
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