Appeal No. 1999-1355 Page 7
Application No. 08/469,786
Obviousness
All of the claims on appeal stand rejected under 35 U.S.C. § 103. With respect
to claims 35-41, the examiner relies on Neuberger, Cabilly and Hopp as evidence of
obviousness; with respect to claims 42-47, the examiner relies on Neuberger and Hopp.
Neuberger and Cabilly are cited principally to establish that recombinant
antibodies were known in the art at the time of the invention. Neither reference
describes antibody-non-antibody hybrid proteins, and the examiner relies on Hopp as
evidence that “the production of hybrid proteins was known in the art.” Answer, page
11. According to the examiner, Hopp “teach[es] the synthesis of hybrid proteins
including antibodies . . . and for example, toxic proteins . . . by recombinant DNA
techniques” and “also disclose[s] vectors encoding identification peptides and cleavable
linker sequences that facilitate[ ] purification of desired proteins.” Id.2
In the examiner’s opinion, it would have been obvious “to have modified the
teachings of either [Neuberger or Cabilly] by transfecting cells with vectors containing
hybrid immunoglobulin genes as taught by [Hopp] in order to obtain bifunctional
chimeric antibodies containing as part of that antibody, an identification peptide where
any peptide protein is an identification peptide.” Answer, page 11.
“[T]he examiner bears the initial burden of presenting a prima facie case of
obviousness. Only if that burden is met does the burden of coming forward with
2 The examiner’s wording here is somewhat misleading - Hopp does not disclose
antibody-toxin hybrids, rather, the reference describes hybrids between “selected
proteins” and “identification peptides.” The selected protein portion of the hybrid may
be an antibody or a toxin, but the reference does not describe an antibody connected to
a toxin - instead, each is connected to an identification peptide. See, e.g., column 5,
lines 9-15 and column 6, lines 55-58.
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