Appeal No. 2005-1344 Page 18
Application No. 08/468,610
On the record presented for our review, we note that the obviousness
rejection presented a number of references directed to various chromatography
resins. While we would not dispute that these chromatography resins exist, we
question why a person of ordinary skill in the art would apply such resins against
appellants’ claimed invention. For example, we note that Hancock, as relied
upon by the examiner, states (column 1, lines 10-14), “the invention is concerned
with the provision of ion exchange resins capable of being utilized to separate
copper, nickel and cobalt both from each other and also from other metals in
solution.” Appellants’ claimed invention is concerned with proteins and/or
peptides. There is no discussion of separating proteins on the resin taught by
Hancock, nor is there a discussion of the use of the disclosed resin at a pH
above 4.0.
If upon further consideration the examiner believes that an obviousness
rejection should be made, we encourage the examiner to clearly articulate such a
rejection paying particular attention to identifying why the combination of
references relied upon would have placed appellants’ claimed invention in the
hands of a person of ordinary skill in the art at the time the invention was made.
IV. Enablement:
Appellants’ claimed invention is directed to a resin-protein/peptide
complex. As we understand it, this complex relies on the pI of the target
protein/peptide. In addition, according to the claimed invention “about 50 percent
or more of the target protein or peptide in an aqueous medium binds to the resin
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