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Interference No. 104,761 Paper`108
Univ. of New Mexico v. Fordham Univ. Page 8
biochemical traits, i.e. the ability to bind adenine nucleotides (ATP and
ADP), and peptides or other proteins. In fact, the Board has concluded
that "at the time of UNM' s invention, the state of the art pointed to both
protein-binding and ATP-binding for hspl 10" (Decision, at page 42, first
full paragraph, last sentence). Fordham submits that in rendering the
Decision the Board has overlooked Fordham's arguments that, in view of
e.g. DnaK-ADP-peptide ternary complexes of Count 3, it is obvious that
hspl 10, which is known to be able to bind ADP and a peptide separately,
can also bind both simultaneously to provide the ternary complexes of
UNM716 claims 7-12 (see e.g. Fordharn Preliminary Motion 4 at page 9;
Fordharn Reply Motion 4 at page 5, last two paragraphs extending onto
page 6; and Fordham Reply Motion 4, at page 8, third full paragraph).
[14] While the first paragraph of the cited portion of the Board decision does suggest that
the obviousness of hspl 10 in view of hsp70 is the issue under consideration, the
second paragraph clarifies that in fact the Board considered the motivation for
substituting hspl 10 for hsp70 in the hsp70-ADP-peptide complex of count 3.
Fordharn focuses on the fact that hspl 10-peptide complexes can be formed in
the same way that hsp70-pepbde complexes are formed. The Board decision does not
question the similarity of the process for forming such hsp-peptide complexes. Rather
the decision focuses on the motivation for substituting hspl 10 for hsp70 in the process.
"The mere fact that the prior art could be so modified would not have made the
modification obvious unless the prior art suggested the desirability of the modification."
In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984). The Board
decision found no such motivation and based its decision to deny on that lack of
motivation. Moreover, there is no per se rule that similar complexes made the same
way are thereby obvious in view of each other, thus side-stepping the question of
motivation. Cf. TorPharm, Inc. v. Ranbaxy Pharm., Inc., 336 F.3d 1322, 1327,
67 USPQ2d 1511, 1514 (Fed. Cir. 2003) (confirming the absence of a per se rule of
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