Appeal No. 1995-3148
Application No. 08/011,130
that lack Fc portions: “Fv, Fab and F(ab’)2 fragments of antibodies and methods of
producing these fragments are well known in the art.” See the Answer, page 6.
Appellant argues that the references teach nothing more than 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 17 through 19 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 18).
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,
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