Ex parte Becker et al.

Board of Patent Appeals and Interferences

Mar 4, 1999

07727387 (B.P.A.I. Mar. 4, 1999)

Application for patent filed July 5, 1991. According to appellants, 1
this application is a continuation of application 07/240,649, filed September
6, 1988, now abandoned.
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1)
was not written for publication in a law journal and (2) is
not binding precedent of the Board.
Paper No. 24
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte UDO BECKER, KONRAD BRAUN and NORBERT HEIMBURGER
_____________
Appeal No. 95-1293
Application 07/727,3871
______________
ON BRIEF
_______________
Before WINTERS, GRON and TORCZON, Administrative Patent Judges
WINTERS, Administrative Patent Judge.
DECISION ON APPEAL
This appeal was taken from the examiner's decision
rejecting claims 11, 12, 13, 15 and 16, which are all of the
claims remaining in the application.
Appeal No. 95-1293
Application 07/727,387
2
Claim 15, which is illustrative of the subject matter on
appeal, reads as follows:
15. A method for the determination of soluble fibrin in
a body fluid, comprising the steps of:
a) binding fibrinogen to a solid phase support;
b) incubating a sample of said body fluid with
the solid phase bound fibrinogen whereby the
soluble fibrin specifically binds to the solid
phase bound fibrinogen, immobilizing the soluble
fibrin;
c) separating said immobilized soluble fibrin
from said body fluid;
d) providing an antibody able to react
immunochemically with the immobilized soluble
fibrin, said antibody being covalently linked to
a detectable label to form a labeled antibody
capable of immunochemically reacting with the
immobilized soluble fibrin;
e) contacting the labeled antibody with the
solid phase bound fibrinogen which has been pre-
incubated with said body fluid to specifically
bind the label to said immobilized soluble
fibrin;
f) detecting said bound label; and
g) determining the concentration of soluble
fibrin in the body fluid from said bound label
wherein said antibody covalently linked to said
detectable label is derived from an animal of
the same species from which the fibrinogen is
obtained but which is not the same species as
Appeal No. 95-1293
Application 07/727,387
3
the animal from which the body fluid is taken.
[emphasis added]
The references relied on by the examiner are:
Tom et al. (Tom) 4,366,241 Dec. 28, 1982
Chem. Abst., Vol. 104, No. 3, 17365m, January 20, 1986, of
Scheefers-Borchel, et al., "Determination of fibrin with
fibrin-specific antibodies", Eur. Pat. Appl. EP 152,612,
published August 28, 1985. (Scheefers-Borchel)
Stemberger, et al., "Determination of Soluble Fibrin Monomer
Complexes by Adsorption on Immobilized Fibrinogen", Thrombos.
Haemostas. (Stuttg.), Vol. 39, pp. 574-581 (1978).
(Stemberger)
Respecting Scheefers-Borchel, the examiner does not rely
on European Patent Application 152,612 in its entirety.
Rather, the examiner makes clear that she relies on the
abstract of the European Patent Application (Examiner's
Answer, Paper No. 21, pages 2 and 3). Appellants also refer
to the abstract in their appeal brief, Paper No. 19, page 2.
Likewise, we have limited our review to the above-cited
published abstract, not European Patent Application 152,612.
The previously entered rejection of claims 11, 12, 13, 15
and 16 under 35 USC § 103 as unpatentable over Scheefers-
Borchel in view of Stemberger and, "if necessary", further in
Appeal No. 95-1293
Application 07/727,387
4
view of Lenz, et al. (U.S. Patent No. 4,914,040) and Tom, has
been with-drawn. See the Supplemental Answer, Paper No. 23,
paragraph bridging pages 2 and 3. The issue remaining for
review is whether the examiner erred in rejecting claims 11,
12, 13, 15 and
16 under 35 USC § 103 as unpatentable over Scheefers-Borchel
in view of Stemberger "and, if necessary, further in view of"
Tom.
Discussion
On consideration of the record, including appellants'
main brief (Paper No. 19), the reply brief (Paper No. 22), the
Examiner's Answer (Paper No. 21), and the Supplemental Answer
(Paper No. 23), we reverse the rejection under 35 USC § 103.
Appellants argue that when all of the prior art is
considered together, one of ordinary skill would not have a
sufficient basis for the requisite reasonable expectation of
success to sustain a rejection under 35 USC § 103. See In re
Clinton 527 F.2d, 1226, 1228, 188 USPQ 365, 367 (CCPA 1976).
Appeal No. 95-1293
Application 07/727,387
5
According to appellants, even if the references were combined
in the manner proposed by the examiner,
there is no disclosure in the prior art of the
nature of the fibrin/fibrinogen binding. Thus,
there is nothing in the references to suggest that
the specific binding between fibrin and fibrinogen
in Stemberger is the same as the type of binding
between antibodies and antigens described in
Scheefers-Borchel. The latter binding
(antibody/fibrin) is an immunological reaction
whereas the former binding (fibrin/fibrinogen) may
be, e.g., intramolecular hydrogen binding.
Fibrinogen simply cannot be equated to an antibody
directed against fibrin. [appeal brief, Paper No.
19, page 10]
We generally agree with this line of reasoning.
On this record, the examiner has not established that
Stemberger's adsorption of plasma fibrin on fibrinogen-
Sepharose has the same strength and selectivity compared with
the antigen/antibody binding described by Scheefers-Borchel.
Therefore, even if the prior art references were combined in
the manner proposed, a person having ordinary skill would not
have arrived at the claimed method with a reasonable
expectation of success. Note that independent claims 15 and
16 define a quantitative method for determining soluble fibrin
in a body fluid. Step(g) in each claim requires "determining
Appeal No. 95-1293
Application 07/727,387
6
the concentration of soluble fibrin in the body fluid".
Where, as here, the examiner has not established that persons
having ordinary skill in the art would have expected that the
adsorption binding of Stemberger has the same strength and
selectivity as the antigen/antibody binding of Scheefers-
Borchel, we find that the references would not have led
persons having ordinary skill in the art to appellants' method
for quantitatively determining soluble fibrin in a body fluid
with a reasonable expectation of success.
At most, a person having ordinary skill would have found
it obvious to try the proposed modification of the Scheefers-
Borchel, per the teachings of Stemberger and "if necessary",
Tom.
Obvious to try, however, is an improper consideration in
adjudicating obviousness. Hybritech Inc. v. Monoclonal
Antibodies, Inc. 802 F.2d 1367, 1380, 231 USPQ 81, 91 (Fed.
Cir. 1986).
The examiner's decision is reversed.
Reversed
Appeal No. 95-1293
Application 07/727,387
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SHERMAN D. WINTERS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
TEDDY S. GRON ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
RICHARD TORCZON )
Administrative Patent Judge )
vsh
Appeal No. 95-1293
Application 07/727,387
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