Appeal No. 1996-2539
Application 08/150,776
composition lacking the permitted variants. Appellants are free to define (and claim) their
invention as one or the other, or both.
We find that the specification reasonably conveys the concept of a vaccine
composition free of permitted HBsAg variants to one of ordinary skill in the art, and thus
satisfies the written description requirement of 35 U.S.C. § 112, first paragraph.
Accordingly, the rejection of claims 24 and 25 is reversed.2
Obviousness
As stated in Pro-Mold & Tool Co. v. Great Lakes Plastics, Inc., 75 F.3d 1568, 1573,
37 USPQ 1626, 1629, (Fed. Cir. 1996) (citation omitted):
It is well established that before a conclusion of obviousness may be made
based on a combination of references, there must have been a reason,
suggestion, or motivation to lead an inventor to combine those references.
Miyanohara, Hitzeman, Brown I, Brown II, and Vyas establish that vaccines
comprising recombinant HBsAg were conventional at the time of the invention, and that the
region of HBsAg including amino acids 139 to 147 was known to be a dominant epitope
on the “a” group antigen of HBV. Moreover, Brown II states that the “a” group determinant
“is present on all subtype variants of hepatitis B virus, and antibody to this group antigen
confers protection against all subtypes” (Brown II, page 186, left-hand column).
237 CFR § 1.75(d)(1) requires that “the terms and phrases used in the claims must
find clear support or antecedent basis in the description so that the meaning of terms in the
claims may be ascertainable by reference to the description.” We note that appellants
have not complied with this rule.
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