Appeal 2007-0746
Application 10/139,496
not unfair to applicants, because ‘before a patent is granted the claims are
readily amended as part of the examination process’. . . .” In re Hyatt,
211 F.3d 1367, 1372, 54 USPQ2d 1664, 1667 (Fed. Cir. 2000) (internal
citations omitted). Upon doing so, we find the claim term “immunopurified
glycoprotein” does not exclude a glycoprotein purified by a different process
than that used by Appellants, if the resulting protein is the same. Thus, we
further find the Examiner has made a prima facie case that Zajic’s
glycoprotein (which is “reactive with” KHRI-3) is the same glycoprotein as
that claimed by Appellants. Appellants have not provided evidence to the
contrary.
Appellants argue: “Zajic et al. does not provide for the separation of
HSP-70 from the claimed protein, both of which would co-exist in the same
or similar location on a Western blot gel.” (Br. 11.) To support this
argument, Appellants merely state that HSP-70 and their claimed
glycoprotein “would co-exist in the same or similar location on a Western
blot gel.” (Id.) They have not demonstrated Zajic’s glycoprotein would
yield more than one protein when treated according to their procedures. In
any case, as presently written, claim 1 does not exclude HSP-70. To the
extent Appellants wish to do so, they may by amendment. See Hyatt, 211
F.3d at 1372, 54 USPQ2d at 1667.
In effect, Appellants appear to be arguing their claims should be
treated as product-by-process claims and thus limited to a glycoprotein that
has been purified by a particular process. However, during examination we
do not so limit the claims. See, e.g., In re Thorpe, 777 F.2d 695, 697, 227
USPQ 964, 966 (Fed. Cir. 1985) (“patentability of a product does not depend
on its method of production”). Once the Examiner has identified a prior art
9
Page: Previous 1 2 3 4 5 6 7 8 9 10 Next
Last modified: September 9, 2013