Appeal No. 2000-0893 Page 9
Application No. 08/392,407
While the examiner acknowledges (Answer, page 5) appellants’ reference
(Brief, page 11) to Sambrook and agrees (Answer, page 5) that with the
appropriate carrier molecule “an antibody can be made to virtually any chemical
compound,” the examiner finds (Answer, pages 4-5), with reference to the
factors set forth in In re Wands, 858 F.2d 731, 737,]8 USPQ2d 1400, 1404,
(Fed. Cir. 1988):
that the quantity of experimentation would be high because there is
no direction or guidance presented as to which haptens will
produce catalytically active antibodies and which will not. The
guidance given for making catalytic antibodies is only as to possible
screening methods. It is well known in the catalytic antibody art
that exactly what hapten is used will determine whether the
antibody will be catalytically active or not. As there are no working
(or non-working) examples showing which haptens will be operable
and which will not …, the prior art teaches that what hapten is used
is paramount in whether a given hapten will produce a catalytic
antibody the predictability of this art is not great … and the claims
are very broad….
In support of this position, the examiner relies (Answer, page 5) on
Schultz and Janda.3 According to the examiner (id.) “[t]hese references show
that whether an antibody that has catalytic activity is obtained from the many
3 We note that the examiner relied, inter alia, on Schultz and Janda, in the Final Office Action, to
support a rejection under 35 U.S.C. § 103. This rejection, however, was subsequently withdrawn.
See Answer, page 7. The examiner, however, did not rely on these references in the Final Office
Action to support the rejection under 35 U.S.C. § 112, first paragraph. For emphasis, we note the
examiner’s statement (Answer, page 5) that “these references merely reinforce … [the] argument
[of record] and do not constitute a new ground of rejection.” In this regard, we note as set forth in
In re Hoch, 428 F.2d 1341, 1342 n.3, 166 USPQ 406, 407 n.3 (CCPA 1970) (“[w]here a reference
is relied on to support a rejection, whether or not in a ‘minor capacity,’ there would appear to be no
excuse for not positively including the reference in the statement of the rejection”). Under these
circumstances, we would not generally consider these references as new applied to the rejection
under 35 U.S.C. § 112, first paragraph. However, on this record appellants have responded
(Reply Brief, pages 8-10) to the examiner’s newfound reliance on Schultz and Janda.
Accordingly, we will consider the position of both the examiner and appellants as it relates to
Schultz and Janda.
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