Appeal No. 2004-2138 Page 8
Application No. 08/765,324
concluding that those skilled in the art would not have been aware of other, equally
applicable methods of separating a reduce, carboxymethylated, and solubilized
apolipoprotein away from self-aggregated and degraded material.
Finally, the examiner argues that the specification does not describe the claimed
method because the Apo B-100 used as the immunogen in the specification was not
soluble, since the protein was not removed from the polyacrylamide gel matrix before
being injected into mice (and therefore was not soluble).1 We do not share this
concern: both the specification (see page 27) and the Lee reference (see the abstract)
make clear that those skilled in the art considered method steps recited in the claims to
produce “soluble” Apo B-100. That the soluble protein was then electrophoresed in a
polyacrylamide gel does not change the soluble protein into an insoluble one; if the
protein is removed from the gel, the skilled artisan would still expect it to be soluble in
aqueous media. That is, those skilled in the art would understand the specification to
describe a process of immunizing mice with a soluble protein, together with an insoluble
polyacrylamide gel matrix.
We conclude that the examiner has not established that those skilled in the art
would not recognize the specification’s description to show possession of the method
now claimed. The rejection under 35 U.S.C. § 112, first paragraph, is reversed.
1 Along the same line, the examiner argues that the Apo B-100 immunogen was not in a reduced form
when it was injected, since the specification does not indicate that the polyacrylamide gel used to
separate the intact Apo B-100 from its self-aggregated and degraded material contained any reducing
agent. This argument is addressed in the new grounds of rejection, below.
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