Appeal No. 2000-0893 Page 11
Application No. 08/392,407
present in the hapten and substrate. … In this regard, Janda only lends
credence to the operability of the present invention, rather than demonstrating its
unpredictability.”
We note that the examiner failed to respond to appellants’ arguments
concerning Janda and Schultz. We also note that appellants incorporate by
reference (see Specification, pages 9 and 10) three United States Patents that
describe the catalysis of chemical reactions by antibodies, and the use of
transition state analogues to immunize animals and the production of catalytic
antibodies. However, we find no discussion by the examiner on this record as to
why these patents and the other documents referred to in this section are
insufficient evidence that a person of ordinary skill in the art would have been
able to practice the claimed invention as filed. In this regard, we remind the
examiner that “a patent need not teach, and preferably omits, what is well known
in the art” Hybritech Incorporated v. Monoclonal Antibodies, Inc., 802 F.2d 1367,
1385, 231 USPQ 81, 94 (Fed. Cir. 1986). On the record before us the examiner
made no attempt to explain why appellants’ specification and the prior art relied
upon, and incorporated by reference therein is insufficient to enable appellants’
claimed invention. Instead, it appears on this record that the examiner has
simply concluded that the specification does not support the claimed invention,
and makes reference to Janda and Schultz, after prosecution is closed, in an
effort to support this conclusion.
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