Appeal No. 2001-0598 Page 11
Application No. 08/451,090
specific molecular modifications necessary to achieve the claimed invention.”
Stated differently, there must be some reason or motivation to carve the claimed
subgenus of viral protease inhibitory compounds out of the genus of rennin inhibitors
taught by ‘795.
The examiner relies on Roberts and Martin to supply this motivation.
According to the examiner (Final Rejection, page 3) “Roberts et al. teach a design
for peptide derivative compounds that are useful for treating HIV through the
inhibition of HIV proteinase.” In addition, the examiner finds (id.) that “Martin
teaches carboxamide methanesulfonate and asparaginamide methane sulfonate
derivative compounds which are highly selective inhibitors of HIV-1 and HIV-2
proteinase.” According to the examiner (Final Rejection, bridging paragraph,
pages 3-4):
It would have been obvious to one skilled in the art of peptide
synthesis and HIV inhibitors to have utilized any of the dipeptide and
tripeptide derivative compund moieties taught by Roberts et al. and/or
J.A. Martin in combination with the peptide derivative compounds
taught by … [‘795] in order to arrive at additional peptide derivative
retroviral inhibitors.
In response, appellants argue (Brief, page 6) that “to define this region of
overlap with EP ‘795 … requires the separate hindsight selection of no less than
five separate variables of the generic formula set out by EP ‘795 in a manner that is
in no way suggested by EP ‘795.” In addition, appellants question (Brief, page 8)
“how the two secondary references both in the arena of HIV protease inhibitors
would be used to modify a reference directed to the entirely different subject matter
of rennin inhibitors….” To this the examiner finds (Answer, page 9) “that [a]ppellants
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