Appeal No. 2006-2892
Application No. 10/012,237
carboxy terminal half, i.e., the half that is substantially identical to SEQ ID NO:24. 5
Thus, we find that the Examiner has made a prima facie case of anticipation—Lal’s
antibodies to SEQ ID NO:24 would be expected to specifically bind SEQ ID NO:227.
Appellants . . . argue that it may be difficult to predict the binding
characteristics of a protein once it has folded since the tertiary structure
of a protein is unpredictable. However, since the Office does not have
the facilities for examining and comparing Appellant's protein/antibody
with the protein/antibody of the prior art, the burden is on Appellants to
show a novel or unobvious difference between the claimed product and
the product of the prior art . . . . See In re Best, 562 F.2d 1252, 195
USPQ 430 (CCPA 1977) and Ex parte Gray, 10 USPQ 2d 1922, 1923
(PTO Bd. Pat. App. & Int.). As of now, since there is such a high
degree of overlap between the protein of Lal and that of SEQ ID
NO:227 it would be expected that the antibodies would cross-react.
[Answer 3.]
As the Examiner explained, the burden shifted to Appellants to overcome the Examiner’s
prima facie case. Specifically, it is Appellants’ burden to show that antibodies do not
specifically bind to both the protein of SEQ ID NO:24 and that of SEQ ID NO:227. See,
e.g., In re Swinehart, 439 F.2d 210, 213, 169 USPQ 226, 229 (CCPA 1971) (“where the
Patent Office has reason to believe that a functional limitation [such as ‘specifically
binds’] asserted to be critical for establishing novelty . . . may, in fact, be an inherent
characteristic of the prior art, it possesses the authority to require the applicant to prove
that the subject matter shown to be in the prior art does not possess the characteristic
relied on.”), quoted with approval in In re Best, 562 F.2d 1252, 1254-55, 195 USPQ 430,
433 (CCPA 1977). To date, Appellants have not met this burden.
5 Appellants admit “there may be antibodies that are capable of binding to epitopes
present in both the PRO 1325 polypeptide and the Lal protein.” Br. 6. According to
Appellants, their claims do not cover such antibodies. Id. (“any antibody capable of
specifically binding to epitopes found in both PRO1325 and the protein of Lal is not
encompassed by the presently claimed antibodies”). We disagree. There is nothing in
the claim language to support Appellants’ position.
6
Page: Previous 1 2 3 4 5 6 7 8 Next
Last modified: September 9, 2013