Ex Parte Ski-Hsiang et al

Board of Patent Appeals and Interferences

Apr 25, 2002

08981700 (B.P.A.I. Apr. 25, 2002)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

Paper No. 27

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte SHEN SHI-HSIANG,
AHMAD SULTAN,
CLAES WAHLESTEDT, and
PHILIPPE WALKER
__________

Appeal No. 2001-1900
Application No. 08/981,700
__________

ON BRIEF
__________

Before WILLIAM F. SMITH, ADAMS, and GREEN, Administrative Patent
Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on the appeal under 35 U.S.C. § 134 from the
examiner’s final rejection of claims 1, 13, 37, and 19, which are all the claims
pending in the application.
Claim 1 is illustrative of the subject matter on appeal and is reproduced
below:
1. A protein, except as existing in nature, consisting essentially of the rat
GAL-R2 amino acid sequence as shown in SEQ ID NO:2.
The reference relied upon by the examiner is:
Shuji et al. (Shuji) EP 0 711 830 A2 Oct. 11, 1995
Appeal No. 2001-1900 Page 2
Application No. 08/981,700

GROUND OF REJECTION

Claims 1, 13, 37, and 19 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Shuji.
We reverse.
DISCUSSION
On this record, the examiner finds (Answer, page 4), as set forth at page
19 of appellants’ specification, that the “instant invention does not bind the
chimeric peptide C7 as well as the prior art [G1] receptor does….” While the
examiner agrees (Answer, page 6) that the claimed receptor subtype is different
than the prior art receptor, the examiner maintains (Answer, page 3) that the
transitional phrase “consisting essentially of” broadens the scope of the claimed
receptor to encompass all galanin receptor subtypes as long as enough
sequence identity is retained to classify the resulting receptor as a galanin
receptor. We cannot agree with the examiner’s position.
In contrast to the examiner’s interpretation of the transitional phrase
“consisting essentially of,” the court in In re Herz, 537 F.2d 549, 551-552,
190 USPQ 461, 463 (CCPA 1976) explains:
In In re Janakirama-Rao, [317 F.2d 951, 137 USPQ 893
(CCPA 1963)] … this court held that the phrase “consisting
essentially of” limits the scope of a claim to the specified
ingredients and those that do not materially affect the basic and
novel characteristic(s) of a composition. It cited Ex parte Davis, 80
USPQ 448 (Pat. Off. Bd. App. 1948), … and quoted approvingly
the following portion of the opinion:
In the present case where the claims recite three
ingredients and the reference discloses four, the important
question is whether the term “consisting essentially of”
excludes that fourth ingredient. We think that it does, since
Appeal No. 2001-1900 Page 3
Application No. 08/981,700

the “modifier” materially changes the fundamental character
of the three-ingredient composition….

Accordingly, we agree with appellants’ interpretation of the claimed
invention (Specification page 2), “the invention encompasses proteins having
exactly the same amino acid sequence as shown in the figures, as well as
proteins with differences that are not substantial as evidenced by their retaining
the basic, qualitative ligand binding properties of GAL-R2.” See also,
Specification page 6.
The evidence on this record demonstrates that the claimed receptor is
different than the receptor taught by Shuji. Therefore, Shuji cannot anticipate the
claimed invention. Richardson v. Suzuki Motor Co., 868 F.2d 1226, 1236, 9
USPQ2d 1913, 1920-21 (Fed. Cir. 1989) (“anticipation” requires that the identical
invention is described in a single prior art reference). Accordingly, the rejection
of claims 1, 13, 37, and 39 under 35 U.S.C. § 102(b) as anticipated by Shuji is
reversed.
REVERSED

William F. Smith )
Administrative Patent Judge )
)
) BOARD OF PATENT
Donald E. Adams )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
Lora M. Green )
Administrative Patent Judge )
Pillsbury, Madison & Sutro LLP
Intellectual Property Group
1100 New York Avenue, NW
Appeal No. 2001-1900 Page 4
Application No. 08/981,700

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