‘611 claim 56 is directed to the treatment of a “subject”. Claim 1 of each of Glaxo ‘403,
‘404, and ‘405 and claims 53 and 55 of Cabilly ‘611 are also directed to a method of treating a
“subject” but these claims specify that the subject to be treated is a human.
Claim 1 of each of Glaxo ‘403, ‘404, and ‘405 and claims 53 and 55 of Cabilly ‘611
require antibodies that are glycosylated by the CHO cells expressing them (FFs 8-11). Claim 56
of the ‘611 application requires antibodies expressed by CHO cells, but does not require that the
antibodies be glycosylated.
Since ‘611 claim 56 is directed to a genus of subjects to be treated (humans and non-
humans) and a genus of antibodies (glycosylated and non-glycosylated), the claim is, on its face,
broader in scope than the subject matter of proposed Count 2, i.e., claim 1 of Glaxo ‘403, claim 1
of Glaxo ‘404, claim 1 of Glaxo ‘405 , ‘611 claim 53, or ‘611 claim. Thus, the subject matter of
proposed Count 2 (taken as presumed prior art) anticipates ‘611 claim 56 and ‘611 claim 56 is
appropriately designated as corresponding to proposed Count 2. See In re Gosteli, 872 F.2d
1008, 1010, 10 USPQ2d 1614,1616 (Fed. Cir. 1989) and 37 CFR § 1.606 and § 1.601(n).11
It is appropriate to substitute a narrower count so as to limit the count to a single
patentable invention. Lee v. McIntyre, 55 USPQ2d 1406, 1412 (BPAI (ITS) 2000). Thus, it is
appropriate to substitute proposed Count 2 if Count 1 encompasses more than a single patentable
invention.
11 § 1.606 states that a claim that defines the same patentable invention as the count
shall be designated as corresponding to the count. § 1.601(n) states that an invention is the same
patentable invention as another invention when the invention is anticipated or obvious in view of
the other invention. Therefore, a genus claim corresponds to a sub-genus or species count.
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