Appeal 2007-0866
Application 09/993,234
polypeptide encoded by the sequence set forth in SEQ ID NO: 1 of ‘285 and
Yu has less than 100% sequence identity with Appellant’s claimed SEQ ID
NO: 6, there is no evidence on this record that the nucleic acid taught by
‘285 and Yu, having SEQ ID NO: 1, does not encode a biologically active
variant of Apo-3 as defined by Appellant’s Specification.
Therefore, while ‘285 and Yu do not identify the polypeptide encoded
by SEQ ID NO: 1 as Apo-3, both references describe the polypeptide in a
manner that is consistent with the requirements of Appellant’s claimed
invention. Accordingly, absent evidence to the contrary, we find that the
preponderance of the evidence on this record supports the conclusion that
the nucleic acid set forth in ‘285 and Yu, having SEQ ID NO: 1, encodes a
polypeptide that is a biologically active variant of Apo-3. Anticipation
requires the disclosure, expressly or inherently, of all the limitations of a
claimed invention in a prior art reference. Verdegaal Bros., Inc. v. Union
Oil Co., 814 F.2d 628, 631, 2 USPQ2d 1051, 1053 (Fed. Cir. 1987) (“A
claim is anticipated only if each and every element as set forth in the claim is
found, either expressly or inherently described, in a single prior art
reference.”).
For the foregoing reasons we affirm the rejection of claim 34 under
35 U.S.C. § 102(e) as being anticipated by Yu. Since they were not
separately grouped or argued, claims 36-39 fall together with claim 34.
37 C.F.R. § 41.37(c)(1)(vii).
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