Appeal No. 2001-2347
Application No. 08/251,574
14. It would reasonably appear that White provides a sufficient motivation or reason for
one of ordinary skill in the art to substitute the 15A8 as the antibody in the antibody
conjugate of Huston through its disclosure of the selectivity of the 15A8 antibody and its
use as a diagnostic for breast cancer. White, page 1339, column 2. Where the prior
art, as here, gives reason or motivation to make the claimed invention, the burden then
falls on an appellant to rebut that prima facie case. Such rebuttal or argument can
consist of any other argument or presentation of evidence that is pertinent. In re Dillon,
919 F.2d 688, 692-93, 16 USPQ2d 1897, 1901 (Fed. Cir. 1990) (en banc), cert. denied,
500 U.S. 904 (1991).
In response, appellants “contend[s] that Huston et al do not disclose or suggest
‘a conjugate’” ... Brief, page 7. According to appellants, Rodwell et al. teach different
functional linkers than those used in appellants' conjugates, when producing conjugates
between an antibody recognition domain and a covalently attached compound. Id.
Appellants further argue that Rodwell does not provide a suggestion or motivation to
produce the particular conjugate claimed. Brief, page 7.
The examiner responds to the argument of appellants finding that, contrary to
appellants' assertion, Huston does teach conjugates (two polypeptide domains
connected by a polypeptide linker) at page 5, pages 14-15, pages 67-68 and in claim
22. The examiner finds that Rodwell also suggests that non-cleavable linkers can also
be used as linkers in their antibody conjugates. Answer, page 6. We also note that the
pending claims do not specify a specific linker for the claimed conjugate, and therefore,
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