Appeal No. 1997-0711
Application No. 08/271,539
transitional phrase "consisting of" excludes any elements, step, or ingredient not specified
in the claim. See In re Gray, 53 F.2d 520, 521, 11 USPQ 255, 256 (CCPA 1931) and Ex
parte Davis, 80 USPQ 448, 450 (Bd. App. 1949). Thus, while we interpret claim 11 as
being open to the administration of other ingredients in addition to the recited polypeptide,
e.g., an adjuvant, the recited polypeptide is limited to only the specified amino acid
residues. The examiner has not pointed out, and we do not find where, Abrams discloses
or suggests that antibodies can be elicited by administration of IL-4-derived polypeptides
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per se. Rather, Abrams specifically discloses and exemplifies conjugating the
polypeptide to an immunogenic carrier molecule (see e.g., c. 4, ll. 8-22; c. 8, ll. 31-33;
EXAMPLES I-VIII). Moreover, Abrams fails to disclose or suggest that the carrier
molecule can be deleted, e.g., replaced with an adjuvant to increase to the immunogenicity
of the polypeptide. Therefore, in view of the amended claim language, we agree with
appellants that claim 11 is not anticipated by Abrams because
Abrams et al. have coupled the polypeptide Lys - Phe to myoglobin, while61 82
[in] the present invention the polypeptide is not coupled to anything
(emphasis in the original, reply brief, p. 4, para. 1).
5Indeed, the examiner has failed to acknowledge or address appellants' argument that the
polypeptide of amended claim 11 was not coupled to anything (see e.g., supplemental answer, p. 1,
"Applicants' arguments [in the reply brief] in traversal of the art rejections are identical to those advanced in
the Brief.").
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