Appeal No. 1997-2518
Application 08/359,642
heterocyclic compound, albeit at different position of the Bk sequence i.e. at position
eight)” (Examiner’s Answer, pages 7 and 8).
It is well established that before a conclusion of obviousness may be made
based on a combination of references, there must have been a reason, suggestion, or
motivation to lead an inventor to combine those references. Pro-Mold & Tool Co. v.
Great Lakes Plastics, Inc., 75 F.3d 1568, 1573, 37 USPQ2d 1626, 1629 (Fed. Cir.
1996) (citation omitted).
The examiner believes that “it would have been obvious . . . to replace the
residue D-Tic residue at position seven of the Henke’s or Hock’s BK peptide sequence
with a hydroxyproline ether or thio ether derivative since replacement of one
heterocycle compound with another would expectedly result in a peptide having similar
activity as taught by Patchett” (Examiner’s Answer, page 7). In our judgment, the
examiner’s reason for modifying the prior art antagonists is without merit.
Patchett discloses a generic structural formula for peptide inhibitors of
angiotensin converting enzyme (ACE). There are 26 alternatives suggested for the
“heterocyclic elements” of the inhibitors, including hydroxyproline ethers and D-Tic. The
examiner has not explained how interchangeability of these substituents in ACE
inhibitors is at all relevant to the modification of bradykinin antagonists. There is no
evidence of record that bradykinin and ACE (or their inhibitors/antagonists) are similar
in structure or function; indeed, appellants maintain that ACE inhibitors and bradykinin
antagonists are “different compounds with different pharmacological activities and
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