Appeal No. 2001-1586 Page 7
Application No. 08/402,394
since it is teachings in the references or knowledge generally available in the art that
must suggest the desirability of combining the teachings in order to arrive at the claimed
subject matter. Here, the examiner’s reasoning is premised upon one of ordinary skill in
the art reading the disclosure of the genus of proinsulin compounds in Markussen ‘212
throught the lens of Grau ‘332. However, we do not find the lens of Grau ’322 to be as
sharply focused as does the examiner.
The examiner has not analyzed Grau ‘332 in regard to the intermediates taught
or suggested by the reference that would be useful in preparing the final products of the
reference such as insulin-Arg B31-OH. If the selection of the compound of claim 33 to
use as the intermediate in preparing insulin-Arg B31-OH would have been obvious, it
seems that it would have been obvious from a consideration of Grau ‘322 alone on the
basis of working backwards from a given desired end product and preparing a list of
intermediate insulin derivatives which would result in the desired end product after
tryptic digestion. For example, Example 2 of Grau ‘322 uses monkey preproinsulin to
form insulin-Arg B31-OH. It is unclear how large the list of possible intermediates is, as
the examiner’s analysis did not follow this path. It may be that, viewed in this light, the
list of possible insulin intermediates that are capable of forming insulin-Arg B31-OH by
way of tryptic digestion is quite large. If so, one is put in the same position as one is in
viewing the large genus of insulin compounds described by Markussen ‘322. Instead of
analyzing Grau ‘322 in this light, the examiner’s analysis jumps immediately to
apparently the only species of the possible millions of compounds generically described
on throughout the remainder of the document. References to page numbers of the Examiner’s Answer
are based upon the actual page numbers of the record document.
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