Appeal 2007-2956
Application 10/677,733
DISCUSSION
“[T]he Examiner bears the initial burden, on review of the prior art
. . . , of presenting a prima facie case of unpatentability. If that burden is
met, the burden of coming forward with evidence or argument shifts to the
applicant.” In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444
(Fed, Cir. 1992). See also Hyatt v. Dudas, 492 F.3d 1365, 1369-70, 83
USPQ2d 1373, 1375-76 (Fed. Cir. 2007).
The Examiner finds:
1) Each of Edery, Takahaski, and Berkenstam describe PAS domain
proteins with hydrophobic cores, satisfying the limitation of claim 1 of a
PAS domain which is “predetermined, prefolded in its native state, and
comprises a hydrophobic core that has no NMR-apparent a priori formed
ligand cavity” (Answer 4-6).
2) Edery, Takahaski, and Berkenstam teach identifying compounds
which modulate the activity of the PAS domain protein (Answer 4-5).
3) Fesik teaches a method of identifying compounds which bind to
proteins using NMR spectra (Answer 3).
The Examiner contends that it would have been obvious to have used
Fesik’s NMR method to identify compounds which modulate the PAS
domain proteins of Edery, Takahaski, and Berkenstam because Fesik teaches
that its method is “amendable to automation for identification of modulator
of protein activity” (Answer 5).
The Examiner’s case for prima facie obviousness is built on the
presumption that the proteins described in each of Edery, Takahaski, and
Berkenstam satisfy the claimed limitation of a PAS domain which is
“predetermined, prefolded in its native state, and comprises a hydrophobic
3
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