Appeal No. 2001-1025 Page 5
Application No. 09/191,974
the same as appellants’ claimed peptide analogs, and therefore would
necessarily have the same properties. On this record, we cannot agree with the
examiner’s assertion. We remind the examiner that “[t]he Patent Office has the
initial duty of supplying the factual basis for its rejection. It may not, because it
may doubt that the invention is patentable, resort to speculation, unfounded
assumptions or hindsight reconstruction to supply deficiencies in its factual
basis.” In re Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 178 (CCPA 1967).
As appellants explain (Brief, page 6) there is no suggestion in either Hadley or
Hruby to select, from the plethora of peptides disclosed, only those peptides that
have a pI in the range of 6-11 and combine them with “dihydroxy acetone or
related tanning agents” as claimed.
As set forth in In re Antonie, 559 F.2d 618, 621, 195 USPQ 6, 8 (CCPA
1977), “[j]ust as we look to a chemical and its properties when we examine the
obviousness of a composition of matter claim, it is this invention as a whole, and
not some part of it, which must be obvious under 35 USC [§]103. Cf. In re
Papesch, 50 CCPA 1276, 315 F.2d 381, 137 USPQ 43 (1963).” On this record,
the examiner failed to meet her burden6 of establishing that the peptide analogs
taught by Hruby or Hadley have an isoelectric point ranging from 6 to 11 as
required by appellants’ claimed invention. The examiner has also failed to
establish that there is some reason or suggestion in the art to select only those
peptide analogs of Hruby or Hadley that have an isoelectric point ranging from 6
to 11. We remind the examiner “a rejection cannot be predicated on the mere
6 The initial burden of presenting a prima facie case of obviousness rests on the examiner. In re
Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992).
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