Appeal No. 2002-0796 Page 13
Application No. 09/110,994
toxicity. Moreover, all that is required is a reasonable expectation of success, not
absolute predictability of success. See In re O’Farrell, 853 F.2d 894, 903,
7 USPQ2d 1673, 1681 (Fed. Cir. 1988). Petrenko provides the reasonable
expectation of success by demonstrating that one can determine a consensus
peptide binding sequence using a random peptide phage display library.
With respect to the claims of Group II, Appellants argue that the rejection
fails to present a prima facie case of obviousness. Appellants argue that the
cDNA library as required by claim 3 is very different from the random library
taught by Petrenko, as a cDNA library provides a means to tailor the library for
bias towards inclusion of proteins of biological interest. Appeal Brief, pages 13-
14.
The examiner asserts that the use of a cDNA library is obvious in view of
the teachings of Petrenko at page 798, column 1. That cited portion of the
Petrenko reference, however, does not appear to be relevant to the use of a
cDNA library, and even if it were, the rejection provides no motivation of why one
would have used a cDNA library as a source of the peptide or protein members
of the library. Because the examiner failed to set forth a prima facie case of
obviousness, the rejection as to the Group II claims, i.e., claims 3 and 6, is
reversed.
With respect to the claims of Group III, Appellants argue that the
combination of Petrenko, Ivanenkov and Sparks does not teach or suggest the
use of a library that comprises an equal distribution of possible peptide
sequences. Again, we agree that the examiner has not set forth a prima facie
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