Appeal No. 2006-0650 Page 9
Application No. 10/007,613
are “stable and active at temperatures >50°C, or even >100°C.” Id., column 15, lines 6-
12. A water bath to bring enzyme solutions to a desired temperature is also described
in Huth. Id., column 31, lines 5-10. Clearly, Huth describes a system that allows for
heating and enzyme exposure at the claimed temperatures, i.e., a test tube in a water
bath. See also Id., column 27, line 66-column 48. The system is not restricted to
“simultaneous heating and enzyme exposure,” as stated by Appellant. There is no
limitation in the claims that requires the heating to be accomplished at the same time
the enzyme exposure is carried out.
Appellant also states there is “no teaching in Huth of utility for the disclosed
enzymes in decontamination of articles infected by prion protein, and a fortiori, no
disclosure of utilizing specific temperatures for prion protein decontamination.” Rely
Brief, Page 7, lines 3-5. However, as we have already pointed out, the claims contain
no limitation, express or inherent, that would limit them to a purpose relating to prion
decontamination. Any reason to have combined the elements identified in the prior art
would therefore be adequate motivation. In re Dillon, 919 F.2d at 693, 16 USPQ2d at
1901 (Fed. Cir. 1990).
Claims 74, 80, 82
Claims 74, 80, and 82 stand rejected over Huth and further in view of Shih3.
The key difference between representative claims 56 and 82 is the recitation in
claim 82 of the specific keratinase “Bacillus licheniformis PWD-1 keratinase.” This
enzyme is disclosed in Shih, where it is described as having an optimal reaction
temperature of 45-50°C. See Shih, Abstract; column 14, lines 25-27. Keratinases are
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