Appeal No. 2006-2892
Application No. 10/012,237
Claims on Appeal
Claims 28-32, all the pending claims, are rejected under 35 U.S.C. § 102(e).
These claims have been argued together and thus stand or fall together. Claim 28 is the
only independent claim.
It reads:
28. An isolated antibody that specifically binds to the polypeptide of
SEQ ID NO:227.
The Examiner has rejected all the claims under § 102(e) over the following
reference: Lal et al. (Lal), U.S. 5,932,442, filed Sep. 23, 1997.2
DISCUSSION
The single issue in this case is whether the antibodies of Lal “bind specifically to
SEQ ID NO:227, as recited in the claims.” Br. 5. SEQ ID NO:227 is also referred to as
PRO1325. According to the specification, Appellants identified and characterized PRO
1325, a transmembrane protein. Specification at 18. Such membrane proteins can act as
signal receptors and thus play a regulatory role in multicellular organisms. Id. at 1.
Claim Interpretation
The Examiner and Appellants appear to disagree as to the meaning of the
functional term “specifically binds.” Appellants do not define “specifically binds” in
their specification but rather rely on what is “well known” in the antibody art. Br. 5. Lal
defines this term as follows: “The terms ‘specific binding’ or ‘specifically binding,’ as
used herein, refer to that interaction between a protein or peptide and an agonist, an
antibody and an antagonist. The interaction is dependent upon the presence of a
2 Appellants have not attempted to antedate this date. Thus, in spite of Appellants’
argument to the contrary (Reply at 5), Lal is prior art under 35 U.S.C. § 102(e).
2
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