Appeal No. 2004-1930 Page 4
Application No. 08/940,544
Appellants are essentially arguing that Eshhar has not reduced the fusion
protein encoded by the polynucleotide of claim 1 to practice. A reference need
not have described an actual reduction to practice of an invention, however, in
order to serve as an anticipatory reference. See In re Siveramakrishnan, 673
F.2d 1383, 1384, 213 USPQ 441, 442 (CCPA 1982); In re Donohue, 766 F.2d
531, 533, 226 USPQ 619, 621 (Fed. Cir. 1985). In addition, as we have
discussed above, Eshhar discloses a chimeric gene that comprises a first gene
segment that encodes the variable regions of the heavy and light chains of a
specific antibody, linked to a flexible linker, and a second gene segment that
comprises a DNA sequence encoding a partial or entire transmembrane domain,
as well as the extracellular domain of a lymphocyte–triggering molecule
corresponding to a lymphocyte receptor or part thereof, and teaches that the
lymphocyte triggering molecule may be CD28. We do not find that the recitation
of other lymphocyte-triggering molecules that may be used in anyway rules out or
teaches away from the use of CD28 as the lymphocyte-triggering molecule.
Quoting In re Arkley, 455 F.2d 586, 172 USPQ 524, 526 (CCPA 1972),
appellants argue that an anticipation rejection is only proper when the reference
“unequivocally disclose[s] the claimed compound or direct[s] those skilled in the
art to the claimed compound without any need for picking, choosing, and
combining various disclosures not directly related to each other by the teachings
of the cited reference.” Appeal Brief, page 4. Appellants contend that “there is
no specific description, or picture of any molecule that includes a portion of
CD28,” and thus the disclosure of Eshhar “is insufficient to teach a compound
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