Appeal No. 2004-2139
Application No. 09/181,601
also, Table 3. Thus, we find that the “triad” is a protein domain which extends, at a
minimum, from amino acid 57 to amino acid 195. Accordingly, contrary to the
appellants’ argument, Wallace discloses the use of a “functional domain” which is at a
minimum, and most likely greater than, 138 amino acids in length.
With respect to Holm, the appellants concur with the examiner that Holm
discloses the analysis (structural alignment) of a 196 amino-acid domain (the knob
domain of adenovirus type 5 fiber protein) with another known 3-D protein structure.
Reply Brief, p. 5.
Thus, we find that Wallace and Holm disclose the 3-D analysis of a range of
protein domain sizes within the range set forth in representative claim 1. To that end,
we point out that our appellate reviewing court has consistently held that even a slight
overlap in a range establishes a prima facie case of obviousness. In re Peterson, 315
F.3d 1325, 1329, 65 USPQ2d 1379, 1382 (Fed. Cir. 2003); In re Woodruff, 919 F.2d
1575, 1578, 16 USPQ2d 1934, 1936-37 (Fed. Cir. 1990) (“the applicant must show that
the claimed range achieves unexpected results relative to the prior art range”). See
also, Titanium Metals Corp v. Banner, 778 F2d 775, 783, 227 USPQ 773, 779 (Fed.
Cir. 1985) ( a prima facie case of obviousness exists when the claimed range and the
prior art range do not overlap but are close enough such that one skilled in the art would
have expected them to have the same properties). Accordingly, we hold that the
examiner has established a prima facie case of obviousness
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