Appeal 2007-2400
Application 10/418,182
as enzymes, antibodies, binding fragments or analogues thereof,
single chain antibodies and catalytic antibodies.
(Id. at col. 3, ll. 33-39.) Thus, those skilled in the art would have expected
that the library suggested by Crea would have been useful as a research tool.
Appellant argues that the Examiner erred in interpreting the claims to
encompass a library in which different amino acids are substituted into
CDRs (Br. 7). We agree with Appellant that the claims, when read in light
of the Specification, are properly interpreted as limited to a library in which
the same “single predetermined amino acid” has been substituted into
different CDRs of an immunoglobulin. The Examiner’s error is harmless,
however, since Crea specifically suggests “the same or different amino acid”
in different regions of a protein, including the CDRs of an immunoglobulin
(see Crea, col. 11, ll. 1-15).
Appellant also argues that it would not have been obvious,
given the teachings of the '650 Patent, to generate all of the
specific subset libraries for the specific, different combinations
of the complementarity-determining regions, as required by the
claims of the invention. Although the ‘650 patent indicates that
the six hypervariable regions of an immunoglobulin can be
mutagenized simultaneously or separately (see col. 11, line 10
et seq.), it does not teach or suggest that libraries having the
specific combinations of permutations of the claimed invention
should be prepared.
(Reply Brief, page 3.)
We disagree. It is true that Crea does not expressly suggest making
each of the libraries recited in instant claim 1, but the prior art need not
expressly suggest an invention in order to have made it obvious. “[T]he
‘motivation-suggestion-teaching’ test asks not merely what the references
disclose, but whether a person of ordinary skill in the art, possessed with the
11
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