Appeal No. 2001-0889 Page 8
Application No. 08/459,086
We agree with the examiner that Chow anticipates the rejected claims.
The peptide used by Chow is not precisely the same as the peptide recited in the
instant claims, in that it has an additional 12 amino acids at one end and is
missing two amino acids from the other end. However, the two peptides share
16 amino acids of exactly matching sequence. Thus, the common amino acid
sequence represents 16/28 (57%) of Chow’s peptide and 16/18 (89%) of the
peptide recited in the instant claims. Based on this high degree of sequence
identity, a person skilled in the art would expect that the antibodies disclosed by
Chow would have the property of binding to the peptide recited in the instant
claims. We conclude that a preponderance of the evidence shows that Chow’s
antibodies would inherently meet the claim limitation of “having binding affinity”
for the peptide recited in the instant claims.
“In response to the PTO’s asserted prima facie case the applicant may
argue that the inference of lack of novelty was not properly drawn, for example if
the PTO did not correctly apply or understand the subject matter of the reference,
or if the PTO drew unwarranted conclusions therefrom. However, when the PTO
shows sound basis for believing that the products of the applicant and the prior
art are the same, the applicant has the burden of showing that they are not.”
In re Spada, 911 F.2d 705, 708, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
“When the claimed compositions are not novel they are not rendered patentable
by recitation of properties, whether or not these properties are shown or
suggested in the prior art.” Id. at 709, 15 USPQ2d at 1658.
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