Appeal No. 2003-0177 Page 7
Application No. 09/231,642
Other Issues
As explained above, the conjugate of claim 1 is broadly directed in part to an
antibody specific for a cellular antigen specific to a targeted cell. However, claim 1 has
only been examined to the extent that the antibody is specific to CEA. As result of the
action we have taken today, the claims on appeal are free of rejection. Upon return of
the application to the examiner, the examiner and appellants should carefully consider
the broad scope of claim 1 on appeal in light of the disclosure at page 7 of Willson
describing conjugates of IL-13R" and immunoglobulins which allow targeting of the
conjugate to particular cells.2 These conjugates may anticipate claim 1 in its broadest
sense.
Also upon return of the application, the examiner and appellants should review
all of the claims pending to ensure that they are in proper form. For example, claims 16
and 14 may be considered duplicates. Also, the examiner rejected claim 4 and claim
22 which depends from claim 4 separately, presumably because of the requirement of
claim 4 for a bispecific antibody. However, claims 16 and 19 also appear to be directed
to bispecific antibodies yet were not separately rejected by the examiner. It is not clear
from this record whether this was an oversight on the part of the examiner or whether
the examiner is reading claims 16 and 19 in a manner different from claim 4. Further,
the examiner and appellants should focus on the specific language used in the
dependent claims to make sure it is appropriate. For example, it is not clear from claim
4 as presently drafted whether the bispecific antibody is a third portion of the conjugate
2 We note as did the examiner that the nomenclature "NR4" appearing at this portion of Willson
is stated at page 1 of the reference to be interchangeable with IL-13R".
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