Appeal No. 2002-1728 Page 3
Application No. 09/339,239
following materials: (1) the instant specification, including all of the claims on appeal;
(2) applicant's Appeal Brief (Paper No. 15) and the Reply Brief (Paper No. 18); (3) the
Examiner's Answer (Paper No. 16); and (4) the above-cited prior art references.
On consideration of the record, including the above-listed materials, we affirm
the examiner's decision rejecting claim 18. However, we reverse the examiner's
decision rejecting claims 19 through 23 and 25.
Discussion
In the Appeal Brief, applicant groups claims 18 and 19 together (Paper No. 15,
section VII. Grouping of Claims). Applicant argues that these claims patentably
distinguish over the combination of Eisenberg and Chiang in view of the following
limitation in dependent claim 19: "wherein the daily effective dose is administered in
two portions for four weeks." (Paper No. 15, page 19, first full paragraph). The
argument is flawed, however, and amounts to a non-sequitur with respect to the
patentability of claim 18 over the combined disclosures of Eisenberg and Chiang. This
follows because the above-quoted limitation in claim 19 does not appear in claim 18. In
other words, applicant's principal argument for the patentability of claim 18 over the
combined disclosures of Eisenberg and Chiang relies on a limitation not in claim 18.
Accordingly, the argument lacks merit.
Eisenberg discloses a method for treating hepatitis B by administering a daily
effective dose of "a new-genetically engineered product," $ser interferon. Applicant does
not deny that Eisenberg discloses every feature of the subject matter sought to be
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