Appeal No. 1995-3257
Application 08/056,382
The crux of the inquiry lies in a comparison of the
claims. In re Borah, 354 F.2d 1009, 1017, 148 USPQ 213,
220 (CCPA 1966). When comparing the claims, we see that
patent claim 1 is directed to a specific monoclonal
antibody while claim 19 provides for:
a topical pharmaceutical composition useful for
decreasing the toxic affect [sic] in animals caused
by the administration of an anthracycline antibiotic
for cytostatic therapy;
an antidotal effective amount of the antibody of patent
claim 1; and,
a pharmaceutically acceptable topical carrier.
Therefore, in assessing whether claim 19 is patentably
distinct from patent claim 1, it is incumbent on examiner
to demonstrate that the three additional features listed
supra are not indicative of the existence of patentable
differences over patent claim 1. General Foods Corp. v.
Studiengesellschaft Kohle mbH, 972 F.2d 1272, 1278-79, 23
USPQ2d 1839, 1844 (Fed. Cir. 1992). In this respect,
examiner (examiner's answer, p. 4) states:
"Although the conflicting claims are not identical,
they are not patentably distinct from each other
because they vary only in the recitation of various
carriers and in the recitation of an intended use.
Because the prior art and claimed antibody are the
same, it would have been obvious to formulate the
claimed antibodies with at [sic] topical carrier for
any [examiner's emphasis] desired use of said
antibodies, because it is known in the art that
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