Appeal No. 2007-0083
Application No. 10/174,574
the earlier-filed applications provides a disclosure sufficient to satisfy the
first paragraph of § 112, and none can be relied on for priority under § 120.
The effective filing date of the present application is its actual filing
date: June 18, 2002. Tang qualifies as prior art and Appellants do not
dispute that it discloses an antibody that binds to the polypeptide of SEQ ID
NO:32. Tang therefore anticipate claim 25. Claims 26-29 fall with claim 25.
4. ANTICIPATION BY RUBEN
Claims 25-29 stand rejected under 35 U.S.C. § 102(b) as anticipated
by Ruben. In the Examiner’s Answer, the Examiner provided the following
citation for Ruben: “Ruben et al. WO 98/04825.” Page 3. In the Form
PTO-892 that accompanied the Office action mailed Nov. 18, 2004,
however, Ruben is cited as “WO 98/40483.” In their brief, Appellants direct
their arguments to the reference cited in the Examiner’s Answer, which does
not appear to be in the official Image File Wrapper.
Since it is unclear from the record (1) what reference the Examiner
intends to rely on; and (2) whether Appellants had proper notice of the basis
of the rejection and an opportunity to respond to it, we will vacate the
rejection based on Ruben.
SUMMARY
We affirm the rejections for lack of patentable utility because the
evidence of record does not support Appellants’ position that PRO270
would be expected to share the activity of thioredoxin. We affirm the
anticipation rejection based on Tang and vacate the rejection based on
Ruben.
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