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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