Appeal No. 2006-2417 Page 6
Application No. 09/200,791
page 7) that the ‘894 patent discusses proteins is at column 1, lines 33-50. While
it is true that the ‘894 patent briefly discusses proteins as part of the background
section of the ‘894 disclosure, the ‘894 patent discloses
[column 1, lines 39-63] that current methodology for decreasing kidney uptake of
radiolabeled peptides requires either “continuous infusion” or “repeated injection,”
both of which “cause substantial inconvenience and increased costs in a clinical
setting. In addition, the most clinically efficacious dosages of amino acids
approach the maximum levels that can be physiologically tolerated before toxicity
is observed.” Therefore, the ‘894 patent discloses (column 1, lines 65-67,
emphasis added), “[i]t is therefore an object of the present invention to provide
methods that greatly reduce kidney uptake of antibody fragment conjugates.”
The remainder of the patent discusses antibody fragment conjugates. We find
no disclosure in the ‘894 patent that would suggest that its methodology would be
useful for all protein conjugates as is now claimed. For their part, other than
citing the first column of the ‘894 patent, appellants fail to direct our attention to
any other portion of the ‘894 patent that would suggest or describe the
applicability of the disclosed methodology for non-antibody conjugates.
We also recognize appellants’ argument (Brief, page 3) that the facts in
this case are different than those in Lilly. According to appellants (Reply Brief,
page 3), “[i]n the present case, no nucleic acid or protein sequences are part of
the claimed subject matter. Rather, the claims recite protein conjugates of ‘not
greater than about 60 kD.’ This is a simple physical property of the protein
conjugate, that is not dependent upon the amino acid sequence of the protein or
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