Appeal 2007-1621
Application 10/721,839
patentability” (Reply Br. 6). Appellants argue that in the instant case “there
is a large genus, and more importantly, no discussion of why the claimed
species would have been selected” (Br. 8), and therefore the Examiner has
not shown sufficient motivation to select the claimed peptides from among
those disclosed in Lehrer (id. at 9).
We do not agree that Lehrer’s disclosure would have failed to provide
sufficient reason to make the peptides of SEQ ID NOs 31 and 32 and use
them to reduce the infectivity of an enveloped virus. Lehrer explicitly states
that retrocyclins are useful for inhibiting enveloped viruses, including HIV
(Lehrer 6), and that such retrocyclins are made by linking any two of 46
explicitly disclosed peptides (id. at 7-8). It is undisputed that selecting the
appropriate peptides from Lehrer’s list of 46 suitable variants results in SEQ
ID NOS: 31 and 32. The reason one of ordinary skill would have selected
the building blocks resulting in the peptides of claim 1 is that Lehrer
disclosed that they were among the peptides suitable for preparing antiviral
peptides.
Moreover, we do not agree that the appealed obviousness rejection
fails to meet the standard set MPEP § 2144.08 and the cases cited therein.
For example, in In re Jones, 958 F.2d 347, 350 21 USPQ2d 1941, 1943
(Fed. Cir. 1992), the court held a species claim to be unobvious over a genus
that was “potentially infinite,” the claimed compound also having significant
structural differences compared to the primary reference. Similarly, in In re
Baird, 16 F.3d 380, 382, 29 USPQ2d 1550, 1552 (Fed. Cir. 1994), the prior
art disclosed a generic formula encompassing “more than 100 million
different diphenols[,]” and the reference’s fifteen preferred compounds did
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