Appeal No. 2001-0869 Page 15
Application No. 08/453,347
Instant claims 3 and 7-16 are also not patentably distinguished from the
method corresponding to the lost count of the ‘998 interference. Claim 3 is
directed to a
method of increasing monocyte mediated tumoricidal activity in a
mammal comprising administering to said mammal a
therapeutically effective amount of mammalian cells that express
JE/monocyte chemoattractant protein-1 when present in the
mammal.
Thus, claim 3 differs from the ‘078 patent’s claim 5 in two respects. First, the
patent claim is limited to “tumor killing cells,” while claim 3 encompasses any
mammalian cell. Second, the claims differ in their preambles.4
These differences do not patentably distinguish claim 3 from the subject
matter of the ‘078 patent’s claim 5. While claim 3 is broader than the patent’s
claim with respect to the types of cells that can be used in the claimed method, “a
later genus claim limitation is anticipated by, and therefore not patentably distinct
from, an earlier species claim.” Eli Lilly & Co. v. Barr Labs., Inc., 251 F.3d 955,
971, 58 USPQ2d 1869, 1880 (Fed. Cir. 2001).
Nor does the difference in preambles patentably distinguish the claims.
The instant specification makes clear that the antitumor activity of JE/MCP-1 is
mediated by monocytes. See page 2, lines 15-17 (“The [tumor] suppressive
effect of JE/MCP-1 depends on the induction of the vertebrate’s immune
response, specifically the response of monocytes.”). Thus, whether the claimed
method is characterized as “suppressing tumor formation” or “increasing
4 The claims also differ in that claim 3 recites administering a “therapeutically effective amount”
but this difference does not distinguish the claims, since it is implied in the patent’s claim 5: in
Page: Previous 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 Next
Last modified: November 3, 2007