Appeal No. 2004-1505 Page 2
Application No. 09/016,743
The references relied upon by the examiner are:
Bacus 5,514,554 May 7, 1996
Hölzer et al. 5,824,782 Oct. 20, 1998
Huston et al. (Huston), “Protein Engineering of Single-Chain Fv Analogs and Fusion
Proteins,” Methods in Enzymology, Vol. 203, pp. 46-88 (1991)
Claims 1, 3-8, 10, and 25 stand rejected under 35 U.S.C. § 103(a). The
examiner relies upon Hölzer and Huston as evidence of obviousness. Claims 1 and 9
are rejected under 35 U.S.C. § 103(a) with the examiner relying upon Huston, Hölzer,
and Bacus as evidence of obviousness. In addition, claims 1, 3-10, and 25 stand
rejected under 35 U.S.C. § 112, second paragraph, as being indefinite and
35 U.S.C. § 112, first paragraph (written description).
We affirm the prior art rejections and reverse the rejections under 35 U.S.C.
§ 112, first and second paragraphs.
Discussion
1. Rejections under 35 U.S.C. § 112, first and second paragraphs.
The issue raised in both of these rejections involves the requirement of claim 1
that a “complete antibody” be used. Under the second paragraph of this section of the
statute, the examiner indicates that it is not clear whether this phrase means “‘complete’
in a sense of binding or having the function of the antibody such as binding or Fc
mediated function, or does the antibody comprise a constant region of CH1, CH2, and
CH3?” Examiner’s Answer, page 12. Under the written description requirement of this
section of the statute, the examiner questions whether the specification describes a
“complete antibody.” Id., page 14.
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