Appeal No. 1997-3322
Application No. 08/353,940
indicates that V" domain secretion levels were lower when co-expressed with the V$
polypeptide, than when expressed as a single domain. This was speculated to be
attributed to limitations on the amount of protein which can be secreted into the E. coli
periplasm, i.e., V$ secretion may compete with V" secretion. Specification, page 21.
Thus, there appears to be an advantage associated with expression and secretion of
single T-cell receptor domains, as claimed. A vector which encodes a single V" or V$ T-
cell receptor variable domain, and its advantages do not appear to be suggested by a
vector encoding both V" and V$ T-cell receptor variable domains linked together, as
taught by Novotny 1991.
Thirdly, the appellant argues that Novotny 1991 is not prior art to the present
application in view of a Declaration submitted under 37 CFR § 1.131. The examiner failed
to consider the Declaration under 37 CFR § 1.131 on the merits relying on In re Schlittler
and Uffer, 234 F.2d 882, 883, 110 USPQ 304, 305 (CCPA 1956), for the proposition that
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a printed publication does not constitute a reduction to practice , but is evidence of
conception only.
We find the examiner’s failure to consider the Declaration under 37 CFR
§ 1.131 on the merits to be error. The facts presented in Schlittler suggest that, in the
context of establishing whether a printed publication can be cited as a prior art reference
137 CFR § 1.131 requires that a declaration must include facts showing
completion of the invention in this country.
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