Ex Parte Crea - Page 6

                Appeal  2007-2400                                                                            
                Application  10/418,182                                                                      

                      As we understand it, the Examiner’s reasoning is that the instant                      
                library can have any “single predetermined amino acid” substituted for the                   
                naturally occurring amino acids in the CDR, while the library claimed in the                 
                ‘340 patent specifies particular amino acids to be substituted for the                       
                naturally occurring ones, and therefore the patented library is a subgenus                   
                within the instantly claimed genus.                                                          
                      We agree that if the library claimed in the ‘340 patent was a species or               
                subgenus encompassed by the instant claims, a rejection for obviousness-                     
                type double patenting would be appropriate.  See Eli Lilly & Co. v. Barr                     
                Labs., 251 F.3d  955, 971 (Fed. Cir. 2001) (“A patentable distinction does                   
                not lie where a later claim is anticipated by an earlier one. . . . “[A] later               
                genus claim limitation is anticipated by, and therefore not patentably distinct              
                from, an earlier species claim.”).                                                           
                      However, we disagree with the Examiner’s interpretation of the                         
                claims.  The instant claim requires numerous subset libraries, which                         
                comprise walk-through mutants in one, two, three, four, five, or all six CDRs                
                of an immunoglobulin.  The library of the ‘340 patent’s claim 1, by contrast,                
                only requires walk-through mutants in a single CDR.  Thus, the library                       
                defined by claim 1 of the ‘340 patent is only one of the many subset libraries               
                required by the instant claims.  The ‘340 patent’s library is not a species or               
                subgenus of the instantly claimed library.  We reverse the rejection for                     
                obviousness-type double patenting based on U.S. Patent 6,649,340.                            






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