Appeal No. 1996-1002
Application 07/988,945
which would bind to the IL-2R$ chain, the examiner acknowledges that neither
reference discloses either of the monoclonal antibodies explicitly required by the claims.
Further, the examiner offers no other evidence which would indicate that either of these
two monoclonal antibodies were known at the time of the invention. Instead, the
examiner urges that one skilled in this art, given the disclosures of Takeshita and
Kupiec-Weglinski, would have been able to isolate similar or identical antibodies to
those required by the claims. While it may be true that those skilled in the art could
derive monoclonals which would function in a manner similar to those required by the
claims, functional equivalence is not the test. Here the claims require the presence of
one of two specified monoclonal antibodies. The burden is on the examiner to provide
a reason, based on the prior art or knowledge generally available in the art, as to why it
would have been obvious to one of ordinary skill in the art to arrive at the claimed
invention. Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 297,
n.24, 227 USPQ 657, 667, n.24 (Fed. Cir. 1985). On this record, the examiner has
offered no evidence which would reasonably suggest that either of the two claim
designated monoclonal antibodies were known at the time of the invention and which
would have suggested that one substitute the specific claim designated monoclonal
antibodies for those monoclonal antibodies of either Takeshita or Kupiec-Weglinski.
Thus, we find no reasonable suggestion for modifying either Takeshita or Kupiec-
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