Appeal No. 1997-3116
Application 08/294,953
based on the properties of the product itself. Appellant’s argument is therefore
unpersuasive and we affirm the rejection.
New Ground of Rejection
Under the provisions of 37 CFR § 1.196(b), we make the following new
ground of rejection: Claims 1 -3, 7, and 8 are rejected under 35 U.S.C. § 102(b)
over Granados (‘435). Claim 1 is drawn to a cell line derived from Trichoplusia ni
eggs, which (1) supports replication of virus in serum-free medium; (2) supports
expression of protein after infection by a recombinant virus in serum -free
medium; (3) grows in serum -free medium; and (4) retains the ability to support
replication of virus and expression of protein. The dependent claims recite
additional properties of the claimed cell lines.
As we noted above, the recitation in claim 1 that the claimed cell lines are
“established in a serum free medium” is merely a limitation on the method by
which the claimed product is made and does not distinguish the claimed product
from the prior art. “[The] patentability of a claim to a product does not rest merely
on a difference in the method by which that product is made. Rather, it is
the product itself which must be new and unobvious.” In re Pilkington, 411 F.2d
at 1348, 162 USPQ at 147.
Granados (‘435) discloses the Trichoplusia ni egg-derived cell line BTI-Tn-
5B1-4. This cell line is disclosed to grow in serum-free medium (col. 9, lines 25-
45); to support replication of virus in serum-free medium (col. 9, line 50 to col. 10,
line 45); and to be useful for production of proteins encoded by recombinant
viruses (col. 8, lines 34-40). Granados (‘435) does not indicate that these
8
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