Appeal No. 2007-1140
Application No. 10/753,729
Differences between the prior art and the claimed subject matter
Appellants admit that the RGD peptide component is the same in
instant claim 1 and Cuthbertson (Reply Br. 3). They assert, however, that “it
is the different positions on the molecule where both the reporter and
biomodifier components are attached that separates the present invention
from Cuthbertson.” (Reply Br. 3).
We do not agree with Appellants’ characterization of the differences
between the claimed invention and the prior art. Claim 1 lists a reporter
moiety as being attached to X1 at the peptide’s N-terminus. Cuthbertson
teaches that a biomodifier or reporter can be present at the N-terminus (7:
24-28). At its C-terminus, claim 1 can have a biomodifier moiety.
Cuthbertson also teaches that its peptide can have a biomodifier at its C-
terminus, e.g., where X7 is a linker that comprises a functional side-chain
“suitable for modifying the pharmacokinetics and blood clearance rates of
the said agents” (8: 24 to 9: 15.) and where X8 is NH2 or absent. In sum,
Cuthbertson teaches the reporter and biomodifier moieties may occupy the
same positions which are claimed.
It is true that Cuthbertson discloses examples in which the reporter
moiety is attached to the peptide’s C-terminal end, rather than on its N-
terminus as required by claim 1. However, in evaluating the scope and
content of the prior art, “[a]ll the disclosures in a reference must be
evaluated . . . a reference is not limited to the disclosure of specific working
examples.” In re Mills, 470 F.2d 649, 651, 176 USPQ 196, 198 (CCPA
1972). In this case, Cuthbertson clearly discloses a general formula I which
teaches the reporter and biomodifier groups at the same positions described
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