Appeal No. 1995-2437
Application No. 08/035,723
Appellant argues that the references teach nothing more than administration of
conjugates comprising polymers coupled to intact anti-CD3 antibodies. In responding
to these arguments, the examiner does not dispute this. Instead, for a number of reasons
set forth on pages 8 through 10 of the Answer, the examiner maintains that “a person of
ordinary skill in the art would realize that the Fc region is only required when non-bound
antibodies are used in the in vivo system” and that person would also “have known that any
argument regarding Fc is a non-issue, and is textbook knowledge.”
(Examiner's Answer, page 9).
Our determination of the patentability of the claims is hampered by the examiner’s
failure to specifically acknowledge or address this limitation in the statement of the
rejection. We have no doubt that the prior art could be modified in a manner consistent
with appellant’s specification and claims. That the prior art could be so modified, however,
would not have made the modification obvious unless the prior art suggested the
desirability of the modification. In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127
(Fed. Cir. 1984). What is lacking from the examiner’s treatment of the claims on appeal is
a reason, suggestion or motivation, stemming from the prior art, which would have led a
person having ordinary skill to the claimed method. Pro-Mold & Tool Co. v. Great Lakes
Plastics, Inc., 75 F.3d 1568, 1573, 37 USPQ2d 1626, 1629 (Fed. Cir. 1996). In our
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