Appeal No. 1997-3274 Page 5
Application No. 08/015,248
sequence RIQRGPGRAFVTIGK. Nevertheless, it is not enough to argue, as the
examiner has, that Athere is nothing of record to suggest the criticality of the differences
between the referenced peptides and those recited in [the] claims.@ Answer, page 11.
The claims are directed to antibodies, not peptide immunogens. If the examiner
is alleging that antibodies raised against Montagnier=s peptides or Kennedy=s peptides
would inherently bind the peptide used to raise BAT123, then the examiner has the
initial burden of coming forward with evidence that supports that position. The burden
of proof shifts to appellants only if the examiner=s assertion of inherency has a
reasonable basis in fact - a conclusory statement on the part of the examiner is not
enough to shift the burden. See In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433
(CCPA 1977). If, on the other hand, the examiner is alleging that the specificity of the
antibodies raised against the various peptides would not differ in any Acritical@ way, we
would remind the examiner that Athe examiner bears the initial burden of presenting a
prima facie case of obviousness@ and A[o]nly if that burden is met, does the burden of
coming forward with evidence or argument shift to [appellants].@ In re Rijckaert, 9 F.3d
1531, 1532, 28 USPQ2d 1955, 1956 (Fed. Cir. 1993). Thus, the criticality of a limitation
is immaterial if there is nothing in the prior art to suggest the limitation in the first place.
The specificity of the prior art antibodies aside, we also disagree with the
examiner=s conclusion that it would have been obvious to convert the prior art
antibodies to chimeric antibodies with human constant regions. As discussed above,
the examiner proposes two separate theories for combining the references. First, that it
would have been obvious to make chimeric antibodies for in vivo applications because
Roberts-Guroff suggests that neutralizing antibodies may be protective, while Apeptides
corresponding to the amino acid sequence in the region of residues 298-322 were
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