Appeal No. 2001-1218 Page 4
Application No. 08/727,798
against the claims. See In re Kaplan, 789 F.2d 1574, 1579, 229 USPQ 678, 681
(Fed. Cir. 1986). The rejection set forth in the examiner’s answer does not
establish that the instantly claimed peptide intermediates are an obvious
variation of the claimed peptides, as it does not even address the limitation of
having a base-labile, a hydrazine-labile or a thio-labile protecting group at the
5- and 6-positions. Therefore, it is reversed.
2. Anticipation
Claim 22 stands rejected under 35 U.S.C. § 102(b) as being anticipated
by Folkers. The Examiner’s Answer states that:
[t]he claimed intermediate having the recited general formula
wherein AA5 and AA6 is defined as Lys in the protected form is
fully met by the specific intermediate of Folkers which contain said
protected Lys residues at positions 5 and 6. See col. 3, lines 60-68
through cols. 4-8 and cols. 9 and 10, Table I.
Id. at 4.
Appellants argue that Folkers fails to anticipate the rejected claim
because the 5- and 6-position residues do not contain side chains having
primary amino groups that are modified with a base-labile, a hydrazine-labile or a
thio-labile protecting group. We agree.
In order for a prior art reference to serve as an anticipatory reference, it
must disclose every limitation of the claimed invention, either explicitly or
inherently. See In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1432
(Fed. Cir. 1997). We initially note that the examiner did not even address the
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