Appeal No. 95-4473
Application 08/003,894
do not extend to "functional equivalents". Having carefully reviewed the Examiner's Answer
and Supplemental Answer, we find that the examiner does not adequately explain how a
person having skill would have been led from "here to there", i.e. from the monoclonal
antibodies disclosed by Hill or Nagoya to the specific monoclonal antibodies recited in
claims 9 through 16, 26, 30 through 32, and 34. The examiner does not establish that the
prior art rejection, whether predicated on 35 USC § 102 or 35 USC § 103, is supported by
references which contain an enabling disclosure. See In re Hoeksema 399 F.2d 269, 273,
158 USPQ 596, 600-601 (CCPA 1968).
The rejection of claims 9 through 16, 26, 30 through 32, and 34 is reversed.
Respecting claims 1 through 8, 17 through 25, 27 through 29, and 33, appellants
present two principal arguments explaining why the claims are patentable under 35 USC §
102 or 35 USC § 103. First, appellants argue that the preparative technique for preparing
monoclonal antibodies, disclosed by Hill or Nagoya, is different from their technique for
preparing a monoclonal antibody produced by hybridoma cell line ATCC No. HB 11106,
hybridoma cell line ATCC No. HB 11107, or hybridoma cell line ATCC No. HB 11108.
Second appellants rely on the limitations in these claims requiring that the monoclonal
antibodies exhibit less than one percent cross-reactivity with liver alkaline phosphatase.
The arguments lack merit.
The Hill reference here constitutes the closest prior art. We find no error in the
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