The fact that the subgenus of proposed Count 2 is encompassed by the genus of ‘611
claim 56, does not, by itself, necessarily establish a prima facie case that proposed Count 2 is
obvious in view of claim 56. In re Baird , 16 F.3d 380, 382, 29 USPQ2d 1550, 1552 (Fed. Cir.
1994) . Thus, we determine that Glaxo has made a prima facie showing that claim 56
encompasses an invention that is separately patentable from the particular sub-genus or species
invention encompassed by proposed Count 2.
Cabilly opposes the substitution of proposed Count 2. Cabilly argues that: (1) Glaxo
has not provided evidence that treatment of human subjects is separately patentable from the
treatment of other subjects, and (2) “an antibody expressed by CHO mammalian cells according
to the teachings of Cabilly would be inherently glycosylated”.
Glaxo has shown that it is appropriate to substitute proposed Count 2 because ‘611 claim
56 does not expressly require that the antibodies used for treatment be glycosylated.
When we give claim 56 its broadest reasonable interpretation, we determine that the
antibodies of claim 56 may be glycosylated or non-glycosylated. For example, Dr. Youle
testified that under certain circumstances antibodies expressed by CHO cells may not be
glycosylated (FF 51c). While we make no determination as to whether the ‘611 application
describes antibodies expressed in CHO cells that are not glycosylated, Glaxo has shown that
claim 56 encompasses non-glycosylated antibodies.12
12 Even if the ‘611 application does not describe non-glycosylated antibodies
expressed in CHO cells, we do not find it appropriate to interpret claim 56 as requiring
glycosylation. In re Van Geuns, 988 F.2d 1181, 1186, 26 USPQ2d 1057, 1059 (Fed. Cir. 1993);
Enercon GmbH v. ITC, 151 F.3d 1376, 1384, 47 USPQ2d 1725, 1731 (Fed. Cir. 1998) ("[W]hile
claims are to be construed in light of the specification, they are not necessarily limited to the
specification.")
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