Appeal No. 1997-2374
Application No. 08/064,352
4) "Claim 4 is rejected under 35 U.S.C. § 103 as being unpatentable over Britt et al. in
view of any of the references cited as UR1, VR1, and UR2" (see p. 7 of the
Examiner's Answer, paper no. 42).
We reverse.
DISCUSSION
The claimed subject matter is directed to the monoclonal antibody 83A25, a
hybridoma secreting monoclonal antibody 83A25, a reagent kit that includes
monoclonal antibody 83A25 and methods of using monoclonal antibody 83A25. In
rejecting the claims under 35 U.S.C. §§ 102 and 103, examiner relies on UR1, VR1 and
UR2 for teaching monoclonal antibody 83A25.
To be accurate, although the rejections are styled as though the claims are
rejected over UR1, VR1 or UR2, in point of fact, the examiner is rejecting the claims on
the ground that the monoclonal antibody 83A25 was in "public use"4 in this country
more than one year prior to the filing date of the application. UR1, VR1 or UR2 are
relied upon by the examiner as evidence of that public use. According to the examiner,
the "rejections [are] based upon the transfers themselves, which, under the terms of the
Research Agreements, are believed to constitute public use more than one year prior to
the date of application for patent in the United States" (Examiner's Answer, p. 5).
Examiner argues that the "dates of these references indicate that the invention was in
public use in this country for more than one year prior to the date of application for
4 35 USC § 102 states, in part, that:
A person shall be entitled to a patent to a patent unless - ...
(b) the invention was ... in public use or on sale in this country, more than one year prior to the date of the
3
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