Appeal No. 2001-0598 Page 12
Application No. 08/451,090
have chosen to take a narrowly limited view here where, as stated in Merck [‘795]:
‘The invention is based on the problem of finding new compounds with valuable
properties, especially those that can be used to prepare drugs….” The examiner,
however, appreciates (id.) that the scope of this broad statement is limited and that
‘795 “proceeds to state that a new utility for their compounds is as an inhibitor of
rennin” Notwithstanding this limited statement of the utility of the ‘795 compounds,
the examiner finds (Answer, bridging sentence, pages 9-10) that “one skilled in the
art of amino acids and their inhibitory role for treating HIV, would be motivated to
seek out other pharmaceutical utilities for similar amino acid structures….”
We note the examiner’s reference (Answer, page 10) to the structures set
forth in Roberts, page 359 and Figure 1. However, according to Roberts (bridging
paragraph, pages 358-359) these structures, are “based on the pol fragment
Leu165-Ile169, containing the transition state moiety Phe?[CH(OH)CH2N]Pro in place
of the Phe167-Pro168 scissile bond….” These structures, however, are distinct from
the structures set forth in ‘795. Similarly, the structure set forth in Martin is unrelated
to the structures set forth in ‘795. We note that the examiner fails to provide an
explanation to support his conclusion that it would have been obvious to modify the
structure of ‘795 based on the structures set forth in Roberts and Martin.
We remind the examiner as set forth in In re Fritch, 972 F.2d 1260, 1266, 23
USPQ2d 1780, 1783 (Fed. Cir. 1992) (citations omitted):
“Obviousness cannot be established by combining the
teachings of the prior art to produce the claimed invention, absent
some teaching or suggestion supporting the combination. Under
section 103, teachings of references can be combined only if there is
some suggestion or incentive to do so.” Although couched in terms of
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