Appeal No. 2002-0872 Page 7
Application No. 08/470,849
the prosecution history (sometimes called "file wrapper and contents") of
the patent consists of the entire record of proceedings in the Patent and
Trademark Office. This includes all express representations made by or
on behalf of the applicant to the examiner to induce a patent grant, or, as
here, to reissue a patent. Such representations include amendments to
the claims and arguments made to convince the examiner that the
claimed invention meets the statutory requirements of novelty, utility, and
nonobviousness. Thus, the prosecution history (or file wrapper) limits the
interpretation of claims so as to exclude any interpretation that may have
been disclaimed or disavowed during prosecution in order to obtain claim
allowance.
In our opinion, appellants limited the interpretation of their claimed invention to a human
TNFR1 – human IgG1 preparation, by amending their claimed invention to include the
term “human” in front of the term TNFR1-IgG1 (see Paper No. 8, page 2), and by
arguing that their claimed invention is limited to human TNFR1 – human IgG1
preparations (see Paper No. 8, page 6, and Brief, page 11). Accordingly, the human-
mouse construct disclosed by Beutler does not anticipate the claimed invention.
We recognize the examiner argument (Answer, page 12), “[t]he claims are not
limited to a specific species with a specific amino acid sequence, but is [sic] encompass
a genus of ‘human TNFR1-IgG’ whose amino acid sequence is not limited.” The
examiner, however, has not explained why the absence of amino acid sequence
information would have any effect in the determination of whether a chimeric human-
mouse fusion protein anticipates a human fusion protein as set forth in the specification
and claims (e.g., claim 18, “[a] human TNFR1-IgG1 preparation….”). “A claim is
anticipated only if each and every element as set forth in the claim is found, either
expressly or inherently described, in a single prior art reference.” Verdegaal Bros., Inc.
v. Union Oil Co., 814 F.2d 628, 631, 2 USPQ2d 1051, 1053 (Fed. Cir. 1987); In re
Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997). It is
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