Appeal No. 2001-0758 Page 6
Application No. 08/919,477
page 20) is at least superficially plausible, inasmuch as the claims merely require a
“linker group” capable of covalently binding an antibody; Barbet shows that DTPA is
capable of forming a covalent bond, through a carboxylic acid group, with an amino acid
residue; and DTPA has multiple carboxylic acid groups. Nevertheless, as this issue
was never raised in the examiner‘s statement of the rejection, we cannot say with any
confidence that appellants have had any real opportunity to respond.
Accordingly, we vacate the examiner’s rejection and remand the application to
the jurisdiction of the examining group for consideration of this issue. We emphasize
that our action today terminates the appeal process, and we are not authorizing a
supplemental examiner’s answer under 37 CFR § 1.193(b)(1).
FUTURE PROCEEDINGS
Should the examiner choose to issue a new office action in this case, we point
out the following deficiencies in one of the principal positions taken in the examiner’s
Answer. The examiner asserts that Barbet “clearly suggests the covalent attachment of
[ ] antibody(ies) to the Barbet aminopoly-carboxylate-appended peptides via a linker
group (e.g. one or both DTPA groups)” (Answer, page 10), while Adams “discloses the
use of linkers (e.g., maleimide, isothiocyanate . . . [etc.]) to attach a polyaminocarb-
oxylic (e.g. chelating agent) to an antibody” (Id., page 6), and concludes that “it would
have been obvious . . . to utilize a linker, as disclosed in [Adams], to modify the Barbet
aminopolycarboxylate-appended peptides for attachment of antibody in order to obtain
a tumor diagnostic probe as suggested by [ ] Barbet” (Id.). We cannot agree with the
examiner’s analysis or conclusion.
The problem with the examiner’s rationale is that there is absolutely nothing in
Barbet to suggest the desirability of a covalent attachment between an antibody and the
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