Appeal No. 1999-1434
Application No. 08/307,044
method with murine antibodies recognizing an epitope different from that
recognized by antibody 17-1A. Rather, the examiner points only to a purported
“lack of evidence in the specification” showing that antibodies other than 17-1A
are therapeutically effective. As noted above, however, it is not Appellants’
burden to establish that every embodiment of their generically claimed method is
enabled. If the examiner concludes that the claims are too broad, it is her burden
to support that conclusion with evidence and/or scientific reasoning. That burden
has not been carried here, and we therefore reverse the rejection.
We also disagree with the examiner’s position that the claims are limited
to administration of a single antibody. See the Examiner’s Answer, page 7 (“The
claimed method . . . is NOT drawn to the employment of a combination of
antibodies for the method of treatment.” (emphasis in original)). The claims use
open claim language, and as relevant here require only “administering . . . a
murine monoclonal antibody which specifically binds to an epitope of 17-1A
antigen.” Thus, the claims are open to administration of any other agents,
including other anti-17-1A antibodies, together with the recited monoclonal
antibody. During examination, claims are given their broadest reasonable
interpretation consistent with the specification. See, e.g., In re Morris, 127 F.3d
1048, 1054, 44 USPQ2d 1023, 1027 (Fed. Cir. 1997). The specification states
that anti-17-1A antibodies “can be administered individually or in mixtures
(cocktails) of two or more.” Page 4. Since the claims read on administration of
two or more anti-17-1A antibodies in the claimed method, and since the
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