Appeal No. 2006-2493 Page 5
Application No. 10/126,122
Based on this evidence the examiner finds (id.),
[i]t would have been obvious to one of ordinary skill in the art
to have combined the multiple dimensions of J[indal],
specifically the binding of a second ligand, with the screening
method of H[sieh] where the motivation would have been to
select and identify ligands which specifically bind to a target of
interest at a particular binding site, as taught by J[indal] . . . .
It would further have been obvious to have used any of the
peptide libraries of C[arell] for screening in the method of
H[sieh] and J[indal] where the motivation would have been to
identify members of the library which are ligands/inhibitors of
trypsin, as suggested by C[arell]’s teaching for screening his
library for trypsin inhibitors. One skilled in the art would
reasonably have expected success in screening C[arell]’s
library using the method of H[sieh] because both teach
solution-based screening of peptide/ligand libraries for binding
to a protein.
For their part, appellants do not argue the merits of Hsieh and Jindal
beyond pointing out that neither reference teaches a mass encoded library.1
Brief, page 2. Instead, appellants focus their argument on Carell which
according to appellants does teach a mass encoded library, but this library is
smaller than the library required by appellants’ claimed invention and is used for
a different purpose. Id. More specifically, appellants assert (Brief, page 3),
“[t]here is no suggestion in Carell to use a mass encoded library to screen a
target.” In this regard, appellants assert (id.), “Carell suggests that the libraries of
the claims are not enabled or cannot be used for . . . [appellants’] claimed
method.”
According to appellants (id., footnote omitted), Carell teaches three types
of libraries:
1 The examiner does not dispute this assertion.
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