Appeal 2007-0856
Application 09/281,474
In addition, Appellants argue that the references do not provide
motivation to combine them. Palladino “has a non-RGD targeting moiety
that does not appear to be conformationally fixed. In contrast, the Sharma
reference has a conformationally fixed RGD containing peptide.” (Br. 7.)
If one skilled in the art removed the ‘conformationally fixed’
portion of the Sharma reference, the metal binding ability
would be lost, thus, there is no motivation. On the other hand,
the Examiner has cited no evidence that the Palladino
reference’s non-RGD targeting moiety could be
conformationally fixed and retain activity. If it causes the
targeting moiety to lose activity, the modification would be
unsatisfactory for its intended purpose.
(Id.)
We are not persuaded by these arguments. First, these arguments do
not apply to claim 52 because claim 52 would have been obvious in view of
Palladino alone, as discussed above.
With regard to claims 1 and 53, we disagree with Appellants’
argument that Sharma does not describe a targeting moiety bound to a
chelator. As pointed out by the Examiner, Sharma discloses that the
biological-function domain may be “distinct from the metal binding
backbone,” that is, the two domains “can be differentiated in the molecule”
(Sharma, col. 30, l. 19, to col. 31, l. 1). Thus, Sharma describes a compound
in which the biological-function domain, which can be a targeting moiety, is
bound to the metal binding backbone (i.e., chelator).
We also disagree with Appellants’ argument that there would have
been no motivation to combine Palladino with Sharma. The relevant
question is “whether there was an apparent reason to combine the known
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