Appeal No. 1995-3257
Application 08/056,382
over patent claim 1. Even if their conventionality were
true (and examiner provides no substantiating evidence),
it is
not clear how one with ordinary skill would have found it
obvious to combine an antidotal effective amount of the
antibody with a "pharmaceutically acceptable topical"
carrier based only on the information provided by patent
claim 1. The only reason for doing so would be for the
purpose and the potential benefits appellants have
disclosed. However consulting the disclosure of U.S.
Patent 5,177,016 is impermissible because when
considering whether the invention defined in a claim of
an application is an obvious variation of the invention
defined in the claim of a patent, the disclosure of the
patent may not be used as though it were prior art. In
re Sarett, 327 F.2d 1005, 1012-13, 140 USPQ 474, 481
(CCPA 1964). To the extent that examiner is reading
patent claim 1 to inherently include a carrier, we merely
point out that patent claim 1 defines nothing more than a
monoclonal antibody. "We are not here concerned with
what one skilled in the art would be aware from reading
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