Appeal No. 2001-0762 Page 6
Application No. 08/343,585
binding, which is required to provide the protein with it’s “honorary” enzymatic
activity. Nevertheless, the examiner asserts (id.)”
a person of ordinary skill in the art would reasonably expect that the
all-D Ni2+ rubredoxin analog would exhibit the same hydrogenase-
like activity discussed for the all-L Ni2+ rubredoxin in Zawadzke et
al. (citing Saint-Martin …) as a result of the binding of Ni2+ to the
coordinating site in the same manner in either all-D or all-L
rubredoxin.
However, as appellants point out, the facts in evidence dispute the
examiner’s conclusion. According to appellants (Brief, page 8), Saint-Martin
state “‘[a]t present it is difficult to establish a complete mechanism for hydrogen
activation by the modified rubredoxins.” With regard to the rubredoxin isolate
used by Zawadzke appellants argue that Saint-Martin state:
This rubredoxin has the peculiarity of having the shortest amino
acid polypeptide chain (45 amino acids instead of the 53 of the
other two) but has one more cysteine (5 cysteine residues instead
of 4) … These differences may be significant in the respective
activities observed, but further experiments are necessary to
assess the implication of these differences in the mechanism of
activation of the hydrogen molecule by the modified Ni-rubredoxins.
To support prima facie case of obviousness, the prior art relied upon must
provide a person of ordinary skill in the art with a reasonable expectation of
success. In re Vaeck, 947 F.2d 488, 493, 20 USPQ2d 1438, 1442 (Fed. Cir.
1991). Based on the evidence of record, and in contrast to the examiner’s
position, we are compelled to agree with appellants (Brief, page 9) that one of
ordinary skill in the art at the time the invention was made would not have
believed that the changes between the native and analog rubredoxins were
minor with respect to its hydrogenase activity, or that it could be reasonably
expected that Zawadzke’s modified rubredoxin would have had the hydrogenase
Page: Previous 1 2 3 4 5 6 7 8 Next
Last modified: November 3, 2007