Appeal No. 2003-1722 Page 9
Application No. 09/041,343
Taddei-Peters of several peptides comprising either proline or histidine residues.
The examiner reasoned that proline and histidine “have monocyclic Nitrogen
heterocy[c]les, which would read on the monocyclic nitrogen hetero cycle
template, substituted with two or more groups to which oligomers . . . are
attached.” Examiner’s Answer, page 10.
Appellants argue that the instant claims contain limitations that are not met
by Taddei-Peters. Appellants argue that the histidine-containing peptides do not
comprise a heterocyclic ring “substituted with two or more -O-, -NH- or –C=O” as
required by the claims. With respect to the proline-containing peptides,
Appellants argue that the oligomers attached to the heterocycle do not form “an
amide, urea, urethane, sulfonamide or ester bond with said oligomer,” as
required.
Again, we agree with Appellants. “Under 35 U.S.C. § 102, every limitation
of a claim must identically appear in a single prior art reference for it to anticipate
the claim.” Gechter v. Davidson, 116 F.3d 1454, 1457, 43 USPQ2d 1030, 1032
(Fed. Cir. 1997). “Every element of the claimed invention must be literally
present, arranged as in the claim.” Richardson v. Suzuki Motor Co., Ltd., 868
F.2d 1226, 1236, 9 USPQ2d 1913, 1920 (Fed. Cir. 1989).
Appellants have defined the claimed receptor compounds in a way that
excludes the prior art peptides from the scope of the claims. The claims require
that the heterocyclic template be “substituted with” specified moieties; the most
reasonable interpretation of this limitation is that the specified moieties are
substituents of, and therefore directly attached to, the heterocyclic ring.
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