Appeal No. 1998-1987
Application No. 07/915,783
then in a second step “adding a non-ionic detergent to the suspension.” In
Kilejian and Epstein, the non-ionic detergent (together with phosphate buffer and
other components) is added to water and then this detergent solution is used to
extract the plasmodial parasites.
This slight difference does not distinguish the claimed composition from
those disclosed in the prior art. The claims subject to the instant rejections are
all directed to products, not processes. “The patentability of a product does not
depend on its method of production. If the product in a product-by-process claim
is the same as or obvious from 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, 697, 227 USPQ 964, 966 (Fed. Cir. 1985). There is no
evidence in the record that the same non-ionic detergent will solubilize different
antigens from plasmodial parasites depending on whether it is present in the
extraction buffer, rather than being added in a second step after the plasmodial
parasites are suspended in water. The prior art compositions thus reasonably
appear to meet all of the limitations of claim 68. The Kilejian and Epstein
references therefore support a prima facie case of anticipation.
Appellant argues that both Kilejian and Epstein fail to teach the claimed
compositions. Appellant argues that the references are deficient because they
“1) Used a detergent to extract parasite antigens,
2) None removed detergents from their extracts,
3) None showed that the extracted antigens were insoluble or
would aggregate in insoluble form after detergent removal, and
15
Page: Previous 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 Next
Last modified: November 3, 2007