Appeal No. 1997-2368
Application 08/158,782
patentable difference in scope. (Id.). Appellants urge that the instant claims are not
obvious variations of the claims of the patent. (Reply Brief, page 8). Appellants have
focused their arguments on the difference in an effective amount of a therapeutic agent, as
required by the appealed claims, as compared with an effective amount of a diagnostic
agent as required by the claims of the patent. (Reply Brief, paragraph bridging pages 8-
1
9.) In response the examiner urges that (Supplemental Answer, page 5):
even though US Patent 5,322,567 is drawn to a diagnostic
agent, a therapeutic effect based on an increased
concentration of antibody at the target site could additionally
provide therapeutic effectiveness, an obvious response to the
administration of a diagnostic agent.
What is missing from the examiner's statements in support of this rejection is any
reference to evidence or facts which would reasonably suggest that such a modification of
the diagnostic methods of the patent claims would have been obvious. Having failed to
establish that the claims on appeal are, in fact, obvious over the claims of the patent,
the rejection can not be sustained. Therefore, we reverse the rejection of the claims under
the judicially created doctrine of obviousness-type double patenting.
CONCLUSION
1Appellants’ representative confirmed at the Oral Hearing of November 16, 2000
that a therapeutic effective amount would differ from a diagnostic effective amount both as
to type and loading of the agent used in the conjugate required by the claims in question.
8
Page: Previous 1 2 3 4 5 6 7 8 9 10 Next
Last modified: November 3, 2007