Appeal No. 2000-2269 Page 9
Application No. 08/862,337
We reverse this rejection as well. The rejection over Gold and Bock
suffers from the same deficiencies as the rejection over Gold alone. The
examiner has pointed to nothing in the cited references that would have led one
of skill in the art to a method or product meeting the limitations of claims 1 or 26.
The examiner has not, for example, identified a difference between the teachings
of a specific prior art reference and a specific claim, then explained how the
combination of references would nonetheless have suggested the claimed
subject matter to a person skilled in the art. On this record, we cannot say that
the examiner has carried his burden of showing that the claims would have been
prima facie obvious.
Other Issues
Claims 1 and 26 both end with a reference to “said antibody.” In both
cases, “said antibody” appears to lack antecedent basis; the rest of each claim
refers to an “antigen binding protein.” In addition, claims 2 and 29 state that the
“antigen binding protein” can be either an antibody or a T cell receptor. The
examiner and Appellants may wish to consider whether claims 1 and 26 should
be amended.
In addition, we note that claims 26-34 are directed to nucleic acids defined
largely by their functional, rather than structural, properties. The Federal Circuit
has recently clarified the application of the written description requirement of 35
U.S.C. § 112, first paragraph, to nucleic acids. See University of California v. Eli
Lilly and Co., 119 F.3d 1559, 1566, 43 USPQ2d 1398, 1404 (Fed. Cir. 1997).
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