Appeal 2007-2523
Application 10/370,749
280 position, Presta describes replacing the aspartic acid (D) with alanine
(A), asparagine (N), or serine (S) (id. at Tables 6 and 8).
“Under 35 U.S.C. § 102, every limitation of a claim must identically
appear in a single prior art reference for it to anticipate the claim.” Gechter
v. Davidson, 116 F.3d 1454, 1457 (Fed. Cir. 1997). In addition, a disclosure
that allows one skilled in the art to “at once envisage each member of [a]
limited class” describes each member of the class “as if [the reference] had
drawn each structural formula or had written each name.” In re Petering,
301 F.2d 676, 681-82 (CCPA 1962).
In this case, we agree with Appellants that the generic teaching in
Presta of an amino acid substitution at one or more of various amino acid
positions does not anticipate every polypeptide within this broad teaching.
In particular, we agree with Appellants that one skilled in the art would not
“at once envisage each member of” this broad class “as if [Presta] had drawn
each structural formula or had written each name.”
In rejecting the claims, the Examiner relies on Presta’s definition of
“amino acid substitution,” which lists the twenty standard amino acids
(Answer 6). However, this definition does not describe substituting the
amino acid at position 280 with any of these twenty amino acids. Instead,
unlike in Ex parte A, 17 USPQ2d 1716, 1718 (BPAI 1990), relied upon by
the Examiner, it is necessary to select portions of the subject matter of
claim 1 from various sections of Presta and combine them. As a result, we
do not agree that Presta provides a specific teaching of substituting the
amino acid at position 280 with each of these twenty amino acids and
therefore with the three amino acids recited in claim 1. Thus, we agree with
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