Appeal 2007-1070
Application 09/467,901
9-29. In contrast, however, by using IgE receptors, the
invention focuses on those antibodies that are biologically
active, thus measuring the relevant in vivo level of IgE. See
specification at page 6, lines 1-6.
(Br. 5-6). Claim 23 expressly recites that “in vivo interactions . . . are
simulated” in its method.
While the claimed method may facilitate the measurement of levels of
IgE “that are most likely to be active in vivo” (Br. 7), the method itself is
suggested by the prior art and these properties are inherent to carrying it out.
“Mere recognition of latent properties in the prior art does not render
nonobvious an otherwise known invention.” In re Baxter Travenol Labs.,
952 F.2d 388, 392, 21 USPQ2d 1281, 1285 (Fed. Cir. 1991).
Johnson
The IgE receptor in claim 1 is “CD23 (FcεRII) and/or FcεRI”; thus,
the receptor can be one of three different embodiments: 1) CD23 alone,
2) FcεRI, or 3) CD23 and FcεRI. Since we have concluded that the
combination of Johansen in view of Frank suggests the use of FcεRI in the
claimed assay, it is unnecessary for us to consider the other embodiments
which involve CD23. A claim covering a plurality of embodiments is
unpatentable under § 103 if the prior art demonstrates the obviousness of
any one of them. In re Klein, 987 F.2d 1569, 1570, 26 USPQ2d 1133, 1134
(Fed. Cir. 1993). For this reason, we do not address Appellant’s arguments
regarding Johnson which was cited for its teaching of CD23.
12
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 Next
Last modified: September 9, 2013