Appeal No. 2003-0177 Page 4
Application No. 09/231,642
Specification, page 19, lines 9-24.1 Thus, for the purposes of this appeal, the issue
becomes whether it would have been obvious to one of ordinary skill in the art to use IL-
13R" as the receptor portion of the Eshhar conjugate. We agree with appellants that it
would not have been obvious to do so from the references relied upon by the examiner.
We initially note that the examiner's position is difficult to review due to the
manner in which the Examiner's Answer was crafted. The examiner refers the reader
of the Answer to Paper Nos. 8 and 13 for a statement of the two rejections pending in
this appeal. This is manifestly improper. As set forth in the Manual of Patent
Examining Procedure § 1208, “[o]nly those statements of grounds of rejection
appearing in a single prior action may be incorporated by reference. An examiner’s
answer should not refer, either directly or indirectly, to more than one prior Office
action.” The examiner's error is exacerbated in this appeal because Paper No. 13
refers the reader to Paper No. 8. In reviewing Paper 8, we believe we understand the
examiner's position on the merits
sufficiently to conclude that the references relied upon by the examiner, at least in the
manner applied by the examiner, do not support a prima facie case of obviousness.
The receptor portion of the Eshhar conjugate must function as a "lymphocyte-
triggering molecule." Eshhar, page 7, lines 27-35. To this end, a chimeric gene
encoding the Eshhar conjugate is used to transfect T-cells or other lymphocytes so that
the "scFv linked to receptor subunits [will] serve to transduce the signal from the scFv
and confer antibody specificity to T cells as well as other lymphocytes." Eshhar, page
1 The examiner relies upon Hansen to establish the obviousness of this aspect of the claimed
conjugate. In view of appellants’ admissions, we need not dwell on Hansen.
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