Appeal No. 2001-0889 Page 12
Application No. 08/459,086
was denied based on amendments requested in the claims. See Paper No. 15,
mailed May 14, 1998. The record does not show that the specification
amendments, by themselves, have been the subject of a petition.
2. U.S. Patent 6,010,864
A continuation of the present application has issued as U.S. Patent
6,010,864. The claims of the ‘864 patent are very similar to the claims of the
present application. For example, claim 1 of the ‘864 application appears to be
directed to antibodies having the same binding affinity as the instantly claimed
antibodies, although the ‘864 patent also requires that the antibodies be
“[m]onoclonal antibodies having neutralizing activity against IFN-β.”
On return of this application, and if the application is re-filed or subject to
further prosecution, the examiner should consider whether the instant claims are
patentably distinct from the claims of the ‘864 patent. In this regard, we note that
“[a] later . . . claim is not patentably distinct from an earlier patent claim if the later
claim is obvious over, or anticipated by, the earlier claim.” Eli Lilly & Co. v. Barr
Labs., Inc., 251 F.3d 955, 968, 58 USPQ2d 1869, 1878 (Fed. Cir. 2001). If the
examiner concludes that the present claims are not patentably distinct from the
patented claims, a rejection for obviousness-type double patenting would be
appropriate in the absence of a terminal disclaimer.
Summary
We reverse the rejection for nonenablement but affirm the rejection of
claims 7-9, 11, 12, 18, 19, 21, 22, 31, and 32 as anticipated by Chow. Therefore,
claims 10 and 20 are free of any outstanding rejection.
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