Appeal No. 2002-0796 Page 6
Application No. 09/110,994
prove invaluable both in molecular biological investigations of the genome and in
bringing new targets into drug discovery programs.” Id. at 5-6.
The rejection concludes:
Accordingly, it would have been obvious to one having ordinary skill
in the art at the time the invention was made to identify the protein-
containing peptide binding (consensus) portion or consensus
sequence with the peptides present in a protein data bank
sequence since said method is a conventional method, if not the
only method, by which proteins having a consensus or partial
sequence is identified, as taught by Sparks or Ivanenkov. The
motivation of said comparative method results in identifying
different proteins possessing equivalent functional activities which
will bring new targets into drug discovery as taught by Sparks or will
lead to the identification of novel proteins based on the binding
information of a peptide as taught by Ivanenkov.
Id. at 6.
“In rejecting claims under 35 U.S.C. § 103, the examiner bears the initial
burden of presenting a prima facie case of obviousness. Only if that burden is
met, does the burden of coming forward with evidence or argument shift to the
applicant.” In re Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d 1955, 1956 (Fed. Cir.
1993). The test of obviousness is “whether the teachings of the prior art, taken
as a whole, would have made obvious the claimed invention.” In re Gorman, 933
F.2d 982, 986, 18 USPQ2d 1885, 1888 (Fed. Cir. 1991). We first focus our
analysis on the claims of Group I, of which claim 1 is representative.
Petrenko, as noted by the rejection, teaches the screening of a phage
display library with a small ligand, dioxin, which leads to the identification of a
consensus peptide sequence that binds specifically to the dioxin, EPFP. The
reference also notes that the phage containing that sequence bind to the dioxin
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