Appeal No. 1995-1989
Application 07/850,142
as being based on a non-enabling disclosure when s/he has reason to conclude that one
skilled in the art would be unable to carry out the claimed invention.
In re Buchner, 929 F.2d 660, 661, 18 USPQ2d 1331, 1332 (Fed. Cir. 1991). Here, we
do not find that the examiner has provided any reasons or factual basis as to why one skill
in the art would doubt the specification statements. That is, the examiner has not provided
any reasons or factual basis to support her conclusion that the method of making
monoclonal antibodies having the claimed properties as described on pp. 11-14 of the
specification is not reproducible. To the contrary, we find that she is shifting the burden to
the appellants to demonstrate, or to provide evidence, that their procedure is reproducible.
Accordingly, the rejection is reversed.
The Rejections under 35 U.S.C. § 103
The examiner has premised her various conclusions of obviousness on the
teachings of Behan, Sevier, Cooper and the Sigma catalog. However, we agree with the
appellants that none of the cited references teaches or suggests the claimed
(i) diagnostic method, (ii) monoclonal antibodies having the specified binding
characteristics, or (iii) kits for diagnosing AD which employ said monoclonals. In our
review of the applied prior art we do not find that any of the references even allude to
monoclonal antibodies which bind specifically, and to a statistically greater degree, to
acute phase reactant antigens in a sample derived from a subject having AD than to a
6
Page: Previous 1 2 3 4 5 6 7 8 9 Next
Last modified: November 3, 2007