Taking Count 2 as prior art, in combination with the knowledge of one skilled in the art at the
time the Glaxo applications were filed, (e.g., the known use of chimeric and CDR-grafted
antibodies against T-cell antigens such as CDw52 and CD4 and cancer cell antigens such as
CD33 and CD38), one skilled in the art would have been motivated to express and glycosylate
the known antibodies in CHO cells. Knowing that it is possible and useful to express and
glycosylate antibodies in CHO cells, on the record before us,15 one having ordinary skill in the art
have been motivated to use the CHO cells to express and glycosylate the antibodies specifically
claimed by Glaxo.
Each of the disputed claims is directed to a species or a subgenus of the antibodies or
conditions to be treated found in Count 2. The fact that the species or subgenus of the disputed
claims is encompassed by Count 2, does not, by itself, establish a prima facie case that the
claims would have been obvious in view of Count 2. In re Baird , 16 F.3d 380, 382, 29 USPQ2d
1550, 1552 (Fed. Cir. 1994). However, the situation before us differs from the situation
presented in Baird. In particular, in Baird there was no secondary reference directing one to the
specific compound claimed by applicant. In the circumstances before us, the prior art recognized
the particular antibodies and conditions to be treated at the time of the Glaxo filings. When we
combine the teachings of Count 2 with the direction provided by the prior art, we conclude that
one having ordinary skill in the art would have been motivated to select the particular antibodies
and conditions to be treated found in the Glaxo disputed claims.
15 Glaxo preliminary motions 6-9 are dismissed infra at 51. We have not considered
the arguments presented in Glaxo preliminary motions 6-9 as part of Glaxo preliminary motion 5
for reasons for reasons stated supra at 27.
-29-
Page: Previous 22 23 24 25 26 27 28 29 30 31 32 33 34 35 36 Next
Last modified: November 3, 2007