Appeal No. 1997-2518
Application 08/359,642
therapeutic uses,” especially with respect to modulating blood pressure (Brief, page 25).
Nor do we see anything in Patchett to indicate that the substituents listed are
recognized as universal functional equivalents. Thus, we agree with appellant that
even if Patchett “show[s] that substitution of oligopeptides with hydroxyproline material
and Tic results in ACE inhibitory activity, the reference does not teach or suggest that
the same substitution in bradykinin peptides would achieve bradykinin antagonist
activity . . . even if the hydroxyproline material and Tic are functionally equivalent
substituents in . . . ACE inhibitors, they would not necessarily be functionally equivalent
substituents in [the claimed] bradykinin antagonists” (Brief, page 24).
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 1, 2, 4 and 5 under 35 U.S.C. § 103 is reversed.
REVERSED
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