Appeal No. 2007-1140
Application No. 10/753,729
either the N- or C-termini of the peptide component provides evidence that
the skilled worker would have reasonably expected that the claimed
compound, with the reporter at the N-terminus and the biomodifier at the C-
terminus, to have retained its activity as a diagnostic imaging agent. This is
buttressed by Hart and Dean, both which teach that functional groups (e.g..,
a polycation or radioactive reporter) can be incorporated at any position of
the RGD peptide without affecting its binding or functional activity.
In view of the foregoing, we find sufficient evidence to establish a
prima facie case of obviousness. Because our reasoning differs from the
Examiner’s, we designate this as a new ground of rejection under
37 C.F.R. § 41.50(b) to provide Appellants with an opportunity to respond.
Appellants argue:
ķAlso, in Cuthbertson, the examples teach attachments of the
reporter to the C-terminal end of the peptide X8 and
biomodifier at the N-terminal end at X1. The present invention,
however, specifies that the positioning of the biomodifier is at
the C-terminal end X7, and X8 is absent.
(Reply Br. 4)
We do not find that this distinguishes the claimed invention from
Cuthbertson. In Cutherbertson, the reporter moiety (X8) is attached to the
C-terminus by a spacer moiety (X7) (7: 1-5; 8: 24-27; 9: 10-15).
Cuthbertson’s configuration is flipped in instant claim 1, where the reporter
moiety is attached to the N-terminus by a spacer moiety (i.e., the “linker” of
Cutherbertson) W1. In this case, the instant claim preserves the entire
reporter structure by lifting the linker and reporter from the C-terminus of
Cutherbertson, and attaching them to the N-terminus of the same peptide
component.
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