Appeal No. 2006-2493 Page 11
Application No. 10/126,122
be dissociated from its receptor prior to identification, . . . that multiple
ligands may be added . . . [and] that a ligand may be disrupted by addition
of a competing ligand . . . .” The examiner recognizes, however, that van
Breeman “does not teach a library comprising at least 250 members
wherein at least 90% of the members have distinct molecular mass sums.”
The examiner relies on Carrell to make up for this deficiency in van
Breeman.
According to the examiner (id.), Carrell “teaches and suggests a
library wherein 90% of the members have distinct molecular mass sums,
and wherein the library may comprise as many as 50,000 different
members/combinations of moieties, as set forth above3.
Based on this evidence, the examiner finds (Answer, bridging
paragraph, pages 7-8),
[i]t would have been obvious to one of ordinary skill in the art
to have used any of the peptide libraries of C[arell] for
screening in the method of [van Breeman] 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, and [van Breeman]’s method of screening for
enzyme ligands. One skilled in the art would reasonably have
expected success in screening C[arell]’s library using the
method of [van Breeman] because both teach solution-based
screening of peptide/ligand libraries for binding to a
protein/enzyme.
3 We note that the examiner makes reference to her discussion of Carell as set forth in the
rejection of claims 1-7, 9 and 10 stand rejected under 35 U.S.C. § 103 as being unpatentable
over the combination of Hsieh, Jindal, and Carell.
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