Appeal No. 2003-0395 Page 5
Application No. 09/374,704
since polyamide compounds comprising these sequence[s] were known to bind DNA
with high affinity in a sequence specific manner[,] [t]hus providing additional polyamide
compounds for DNA recognition” (Answer, page 5).
Nevertheless, we agree with appellants that the examiner’s interpretation of Feng
is overly simplistic, and that Feng, considered in its entirety, provides no motivation “to
select the Arg-Pro-Arg sequence from a much larger protein structure, in order to graft
the sequence onto a pyrrole- and imidazole-based polyamide” (Reply Brief, page 5). As
appellants point out, it is the Hin recombinase’s “helix-turn-helix motif [that] serves to
present the Gly139-Arg140-Pro141-Arg142 sequence in precisely the proper orientation to
interact with the DNA molecule” (id., page 6), and “[n]othing in [Feng] would indicate . . .
that, in the absence of this helix-turn-helix motif, the ‘Arg-Pro-Arg’ sequence would
exhibit any DNA binding properties whatsoever” (id., page 7). Moreover, “nothing of
record indicates that this helix-turn-helix motif would exist in the pyrrole- and imidazole-
based polyamides of [ ] Swalley, Parks, and Trauger” (id.).
At best, the examiner has established that individual elements of the claimed
invention were known in the prior art. However, as explained in In re Kotzab, 217 F.3d
1365, 1369-70, 55 USPQ2d 1313, 1316 (Fed. Cir. 2000) (citations omitted):
A critical step in analyzing the patentability of claims pursuant to section
103(a) is casting the mind back to the time of invention, to consider the
thinking of one of ordinary skill in the art, guided only by the prior art
references and the then-accepted wisdom in the field. [ ] Close adherence
to this methodology is especially important in cases where the very ease
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