Appeal No. 2002-0798 Page 4
Application No. 09/107,688
applicants' claims "reads on" the mixture of N-blocked, C-activated amino acid residues
disclosed by Rutter in column 9, line 52. Therefore, according to the examiner, the
claimed mixture of reaction products "reads on" a mixture where each reaction product
in the mixture consists of a Gly-derivatized resin (scaffold moiety) attached to an N-
blocked amino acid residue (chemical reactive compound moiety).
The examiner's position unravels, however, on comparison of the second step in
claim 13 with the deblocking step disclosed by Rutter in column 9, line 67, and column
10, line 20. This follows because applicants' claimed method requires "transforming
said scaffold moiety in said reaction products" (emphasis added). On the contrary,
Rutter discloses deblocking protected amino groups, i.e., "transforming" a chemical
reactive compound moiety but not the scaffold moiety.
We agree with applicants, therefore, that the second step in their claimed
method serves to distinguish over the method disclosed by Rutter in columns 9 and 10.
Accordingly, we reverse the rejection of claims 13, 23, and 26 under 35 U.S.C. § 102(b)
as described by Rutter.
We shall not belabor the record with an extended discussion of the rejections
under 35 U.S.C. § 103(a). The "jumping off point" for each such rejection is the
examiner's determination that Rutter describes the method recited in claims 13, 23, and
26. However, for reasons already discussed, we disagree with that determination. Nor
does the "secondary" prior art compensate for the deficiencies of Rutter. On this
record, the examiner has not established that the combined disclosures of Rutter,
Baindur, and Ostresh, or Rutter and Joran, would have led a person having ordinary
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