Appeal No. 2002-0872 Page 6
Application No. 08/470,849
In our opinion, the indication that claim 24 would be allowable if re-written in
independent form is inconsistent with the continued rejection of claims 20-23 on appeal.
Each of claims 20-23 are drawn to a human TNFR1-IgG1 preparation with various
limitations as to moles of either N-acetylglucosamine or sialic acid residues per mole of
TNFR1-IgG1 protein. The examiner offered no explanation as to why claim 24 would be
allowable while the rejection should be maintained for claims 20-23.
For the foregoing reasons we reverse the rejection of claims 18-23 under 35
U.S.C. § 102(b) as anticipated by Ashkenazi.
Beutler:
According to the examiner (Answer, page 5), Beuler “teach the preparation of the
recombinant human tumor necrosis factor receptor immunoglobulin chimeric protein
produced in CHO cells (column 4, lines 49-62; column 8, line 26-28; column 9, lines 45-
68).” However, as appellants’ point out (Brief, page 11), “[t]he protein of Beutler et al.
simply is not a ‘human TNFR1-IgG1’ as that term is used in the specification and claims
of the present application, it is a mixed human-mouse chimeric protein and is thus
outside the claims of this application.” In this regard, we note that appellants’ TNFR1-
IgG1 construct is fusion of human type 1 TNFR and human IgG1 sequences beginning
at aspartic acid 216. See Specification, pages 34-35.
It may, however, be that the examiner believes that the claim reads on a human
TNFR1 – mouse IgG1 fusion protein. This, however, as appellants point out, is contrary
to the use of the term “human TNFR1-IgG1 as it is used in appellants’ specification.
See supra. As set forth in Standard Oil Company v. American Cyanamid Company,
774 F.2d 448, 452, 227 USPQ 293, 296 (CAFC 1985):
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