Appeal No. 2003-1678 Page 5
Application No. 08/722,659
raised in this appeal.1
As a second matter, we note appellants rely upon a declaration filed under 37
CFR § 1.132 of Joseph Zimmermann as well as declarations filed under 37 CFR §
1.132 of Israel Vlodavsky and Richard Brougiton. Reply Brief, page 3. In arguing the
rejection premised under 35 U.S.C. § 102(e) on pages 6-13 of the Appeal Brief,
appellants did not rely upon any of the three declarations. 37 CFR § 1.192(a) states in
relevant part "[a]ny arguments or authorities not included in the brief will be refused
consideration by the Board of Patent Appeals and Interferences, unless good cause is
shown." Since the three declarations were not relied upon in the Appeal Brief, the
arguments set forth in the Reply Brief based upon the three declarations are untimely
and improper and will not be considered.
3. Rejection under 35 U.S.C. § 102(e).
"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. v. Union Oil Co., 815 F.2d 628, 631, 2 USPQ2d 1051, 1053 (Fed. Cir.
1987) (citations omitted). Here, claim 1 requires a single step, i.e., administering
intravascularly to a patient heparinase enzyme in a specified "effective amount." The
examiner relies upon the procedure set forth in Example 8 of Zimmermann as
describing this step.
1 Exhibit G is a copy of Elan Pharms., Inc. v. Mayo Found., 304 F.3d 1221, 64
USPQ2d 1292 (Fed. Cir. 2002) (Elan I). The opinion in Elan I has been vacated and
replaced. See Elan Pharms., Inc. v. Mayo Found., No. 00-1467 (October 2, 2003)
(Elan II). Thus, appellants' reliance upon Elan I is moot.
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