Appeal No. 1997-2319
Application No. 08/147,707
on its method of production,” and “[i]f the product . . . is the same as . . . a product of
the prior art, the claim is unpatentable even though the prior product was made by a
different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir.
1985) (citations omitted).
Claim 11 encompasses a number of cell populations selected by various
combinations of the presence or absence of CD34, CD38 and the IL-7 receptor. While
the examiner states that “[t]he invention involves the selection of cell subpopulations
which were not previously available to the art” (Examiner’s Answer, sentence bridging
pages 4 and 5), it is not clear to us that, say, a population of lymphoid-committed cells
isolated “based upon the expression” of CD34, CD38 and the IL-7 receptor, would be
any different than an isolated population of lymphoid-committed cells isolated on the
basis of CD34, CD38 and CD10 expression. Upon return of the application to the
examining group, we recommend that the examiner, if he has not already done so,
evaluate the patentability of claim 11 in light of the correct legal standards and the
foregoing remarks.
CONCLUSION
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