Appeal No. 2006-2417 Page 3
Application No. 09/200,791
DISCUSSION
The application before us on appeal is a continuation-in-part of Application
No. 08/407,899 which has a filing date of March 21, 1995, and issued on
December 1, 1998 as United Stated Patent No. 5,843,894 (‘894). As the
examiner explains (Answer, page 9), the subject matter disclosed and claimed in
the ‘894 patent is limited to a method of reducing kidney retention of antibody
and antibody fragments. See e.g., ‘894, claim 1. In contrast, claim 1 before us
on appeal is directed to a method of reducing kidney retention of a protein
conjugate. According to the examiner (id.), the antibody or antibody fragment
conjugates disclosed in the ‘894 patent are species of the protein conjugate
genus set forth in claim 1 of the instant application. In this regard, the examiner
asserts (Answer, bridging sentence, pages 8-9), the species of the ‘894 patent
are insufficient to support the protein conjugate genus now on appeal.
Therefore, the examiner denied appellants’ claim of priority to the ‘894 patent.
Having denied appellants priority claim, the examiner applied the Behr and
Raines references which are available as prior art between the filing date of the
instant application and the ‘894.1
The rejections of record involve the Behr reference, which published
September 1, 1995 (see Brief, page 5). Therefore, Behr is available as prior art
under 35 U.S.C. § 102(b). It is undisputed on this record that Behr teaches a
species within the scope of claim 1 before us on appeal. See e.g. Answer,
1 The only other reference relied upon, Grey issued prior to the effective filing date of appellants
‘894 patent.
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