Ex Parte Cuthbertson et al - Page 6

                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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