Appeal No. 2005-0392
Application No. 09/171,885
Cir. 1998); Verdegaal Bros., Inc. v. Union Oil Co., 814 F.2d 628, 631, 2 USPQ2d 1051,
1053 (Fed. Cir. 1987); Lindemann Maschinenfabrik GMBH v. American Hoist and
Derrick Co., 730 F.2d 1452, 1458, 221 USPQ 481, 485 (Fed. Cir. 1984).
Here, we find no basis for the examiner’s contention that the antibody/csDBM
complex disclosed by Morgan is an antibody fragment that makes up a “synthetic
receptor” as set forth in the claims. To the contrary, we find that the claims state that
the synthetic receptor is an antibody, an antibody fragment, an oligonucleotide or an
oligosaccharide. The claims clearly state that it is the antibody, antibody fragment,
oligonucleotide or oligosaccharide which is non-covalently bound to the drug. Morgan
only teaches a non-covalent linkage between the drug and the drug binding molecule
(the csDBM).2 Since the claimed invention requires a non-covalent interaction between
2 Although not relied upon by the examiner, we note that Morgan discloses (col.
5, lines 5-11):
Non-covalent association of a drug with a carrier protein or antibody
is random and heterogenous in binding affinities, and generally results in
only low levels of bound drug. The less stably bound drug is considered
undesirable due to the increased potential for premature release and
increased risk of host toxicity and a reduced ability to localize to tumor
sites.
Since claim 34 is directed to a method which involves specifically binding a drug
to the synthetic receptor (which includes antibodies) to form a pro-drug complex and
administering said complex to an organism, we do not find that the aforementioned
teachings of Morgan anticipate the claimed invention. That is, anticipation cannot be
established based on probability or possibility. See, In re Robertson, 169 F.3d 743,
745, 49 USPQ2d 1949,1951 (Fed. Cir. 1999); In re Oelrich, 666 F.2d 578, 581, 212
USPQ 323, 326 (CCPA 1981), quoting Hansgirg v. Kemmer, 102 F.2d 212, 214, 40
USPQ 665, 667 (CCPA 1939)(“the mere fact that a certain thing may result from a given
set of circumstances is not sufficient”). Thus, since it cannot be said that the method
taught by Morgan manifestly results in the production of a pro-drug complex wherein the
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