Xencor, Inc.

Patent Trials and Appeals Board

Apr 1, 2020

14155334 - (D) (P.T.A.B. Apr. 1, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/155,334 01/14/2014 John R. Desjarlais 067461-5161-US01 1025
67374 7590 04/01/2020
MORGAN, LEWIS & BOCKIUS LLP (SP)
ONE MARKET, SPEAR STREET TOWER, SUITE 2800
SAN FRANCISCO, CA 94105
EXAMINER
AEDER, SEAN E
ART UNIT PAPER NUMBER
1642
NOTIFICATION DATE DELIVERY MODE
04/01/2020 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
DONALD.MIXON@MORGANLEWIS.COM
SFIPDOCKETING@MORGANLEWIS.COM
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD

Ex parte JOHN R. DESJARLAIS, GREGORY L. MOORE,
RUMANA RASHID, and MATTHEW J. BERNETT
Appeal 2019-001475
Application 14/155,334
Technology Center 1600
Before FRANCISCO C. PRATS, TAWEN CHANG, and DAVID COTTA,
Administrative Patent Judges.
CHANG, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the
Examiner’s decision to reject claims 22, 83, 84, 86, 87, 89–91, 96, 97, and
99–103.1 We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as Xencor,
Incorporated. Appeal Br. 5.
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BACKGROUND
The Specification states:
An ongoing problem in antibody technologies is the desire for
“bispecific” (and/or multispecific) antibodies that bind to two
(or more) different antigens simultaneously, in general thus
allowing the different antigens to be brought into proximity and
resulting in new functionalities and new therapies. In general,
these antibodies are made by including genes for each heavy
and light chain into the host cells. This generally results in the
formation of the desired heterodimer (A-B), as well as the two
homodimers (A-A and B-B). However, a major obstacle in the
formation of multispecific antibodies is the difficulty in
purifying the heterodimeric antibodies away from the
homodimeric antibodies and/or biasing the formation of the
heterodimer over the formation of the homodimers.
Spec. ¶ 77.
According to the Specification,
[t]he present invention is directed to novel immunoglobulin
compositions that co-engage at least a first and a second
antigen. . . . One heavy chain of the antibody contains a single
chain Fv (“scFv”[]) and the other heavy chain is a “regular”
FAb format, comprising a variable heavy chain and a light
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chain. This structure is sometimes referred to herein as “triple
F” format (scFv-FAb-Fc) or the “bottle-opener” format.
Id. ¶ 79.2 The Specification’s Figure 1B is reproduced below:

Figure 1B depicts an immunoglobulin having the “triple F” or the
“bottle-opener” format. Spec. ¶ 41.
The Specification states among other things that “the scFv monomer
of the triple F format can include charged scFv linkers . . . that give a . . . pI
[(isoelectric point)] boost for purification purposes.” Id. ¶ 84. The
Specification further states that “some Triple F formats are useful with just
charged scFv linkers,” although such linkers can also be used with other
mechanisms, such as skew variants, that can “lead to ease of purifying
heterodimeric proteins.” Id.
The Specification further suggests that CD3, which activates T-cells,
is “attractive as co-targets in a therapeutic bispecific format” and teaches

2 We understand Fv to refer to the antibody “variable” region, Spec. ¶ 2,
Fab to refer to the “antigen binding” fragment, and Fc to refer to the
“fragment crystallizable” region.
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that “[o]ne preferred aspect [of the invention] provides an anti-CD3 variable
region having a sequence comprising a vhCDR1 having SEQ ID NO: 411, a
vhCDR2 having SEQ ID NO:413, a vhCDR3 having SEQ ID No:417, a
vlCDR1 having SEQ ID NO:420, a vlCDR2 having SEQ ID NO:425 and a
vlCDR3 having SEQ ID NO:433.”3 Spec. ¶¶ 5, 16.

CLAIMED SUBJECT MATTER
The claims are directed to a heterodimeric antibody. Claim 22 and
101 are the only independent claims and are reproduced below:

22. A heterodimeric antibody comprising:
a) a first heavy chain comprising:
i) a first Fc domain; and
ii) a single chain Fv region (scFv) that binds CD3
comprising a first variable heavy chain, a variable light chain
and a charged scFv linker, wherein said charged scFv linker
covalently attaches said first variable heavy chain and said
variable light chain;
b) a second heavy chain comprising a VH-CH1-hinge-
CH2-CH3 monomer, wherein VH is a second variable heavy
chain and CH2-CH3 is a second Fc domain; and
c) a light chain,
wherein said first variable heavy chain comprises a
vhCDR1 having the amino acid sequence of SEQ ID NO:411; a
vhCDR2 having the amino acid sequence of SEQ ID NO: 413;
and a vhCDR3 having the amino acid sequence of SEQ ID NO:
417, and
wherein said variable light chain comprises a vlCDRl
having the amino acid sequence of SEQ ID NO: 420; a vlCDR2
having the amino acid sequence of SEQ ID NO: 425; and a
vlCDR3 having the amino acid sequence of SEQ ID NO: 433.

3 We understand “CDR” to refer to “complentarity-determining region.”
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101. A heterodimeric antibody comprising:
a) a first heavy chain comprising:
i) a first variant Fe domain; and
ii) a single chain Fv region (scFv) that binds CD3
comprising a first variable heavy chain comprising SEQ ID
NO: 397, a variable light chain comprising SEQ ID NO: 398
and a charged scFv linker comprising SEQ ID NO: 472,
wherein said charged scFv linker covalently attaches said first
variable heavy chain and said variable light chain;
b) a second heavy chain comprising a VH-CH1-hinge-
CH2-CH3 monomer, wherein VH is a second variable heavy
chain and CH2-CH3 is a second variant Fc domain; and
c) a light chain.

Appeal Br. 50, 52 (Claims App. A).

REJECTION(S)
A. Claims 22, 83, 84, 86, 87, 89–91, 96, 97, and 99–103 are provisionally
rejected on the ground of obviousness-type nonstatutory double
patenting as being unpatentable over claims 48–65 of copending
Application No. 14/200,652. Ans. 3.
B. Claims 22, 83, 84, 86, 87, 89–91, 96, 97, and 99–103 are rejected on
the ground of obviousness-type nonstatutory double patenting as
being unpatentable over claims 1–9 of U.S. Patent No. 9,650,446.
Ans. 5.
C. Claims 22, 83, 84, 86, 87, 89–91, 96, 97, and 99–103 are provisionally
rejected on the ground of obviousness-type nonstatutory double
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patenting as being unpatentable over claims 58, 76–79, and 81–98 of
copending Application No. 14/216,705. Ans. 7.
D. Claims 22, 83, 84, 86, 87, 89–91, 96, 97, and 99–103 are provisionally
rejected on the ground of obviousness-type nonstatutory double
patenting as being unpatentable over claims 84–86 and 96–110 of
copending Application No. 14/207,489, which has since issued as
U.S. Patent No. 10,131,710 B2.4 Ans. 9.

OPINION
A. Issue
The Examiner rejected the claims on appeal on the ground of
obviousness-type nonstatutory double patenting as unpatentable over the
claims of copending Application Nos. 14/200,652, 14/216,705, and
14/207,489 (now U.S. Patent No. 10,131,710 B2) and U.S. Patent No.
9,650,446. The same issue is dispositive for all of the rejections; we
therefore consider them together.

4 Because the ’489 application has issued as a patent, the rejection is no
longer provisional. Claims 84–86 and 96–110 of the ’489 application
corresponds to claims 1–18 of the ’710 patent. In this regard, we note that
claims 97, 100, 102, 105, 107 and 110 of the ’489 application recites that the
“charged scFv linker is selected from the group consisting of those shown in
Figure 20,” while corresponding claims 5, 10, 15 and claims 8, 13, and 18 of
the ’710 patent recite that the charged scFv linker is selected from the group
consisting of, respectively, SEQ ID NOs:441–449 and SEQ ID NOs:451–
457. Compare Appeal Br. 66–67 (Claims App. E) with ’710 patent, 62:42–
63:12. However, this difference in claim language does not appear to alter
the scope of the claims.
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1. Basis for the rejections
The Examiner finds that the claims on appeal are directed to “a
heterodimeric antibody comprising a CD3-binding scFv with specified CDR
sequences wherein claimed heterodimeric antibodies include those with a
‘bottle opener’/‘triple F’” structure. Ans. 3.
a) The ’652 application
The Examiner finds that the claims of the ’652 application are
directed to “a composition ‘comprising’ [a] CD3-binding scFv structure
comprising CDR sequences identical to the CD3-binding scFv CDR
sequences recited by the instant claims.” Ans. 4. The Examiner further
finds that the specification and/or figure(s) of the ’652 application disclose
the CD3-binding scFv structure with a charged linker and as part of a
heterodimeric antibody with the “bottle opener”/”triple F” format, as recited
in the claims on appeal. Id. The Examiner concludes that, “even though the
instant claims recite specificities not explicitly recited by the claims of the
[’652] application, species of the instant claims encompassed by the claims
of the [’652] application are disclosed in the specification of the [’652]
application, and thus the instant claims are not patentably distinct from the
claims of the [’652] application.” Id. at 5.
b) The ’446 patent
The Examiner finds that the “claims of the [’446] patent are directed
to heterodimeric antibodies comprising a ‘bottle opener’ /‘triple F’” structure
and a charged linker. Ans. 5. The Examiner further finds that the
specification and/or figure(s) of the ’446 patent disclose, among other
things, “[t]riple F heterodimeric antibodies comprising an anti-CD3 scFv
having a sequence . . . . compris[ing] CD3-binding scFv CDR sequences
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identical to the . . . sequences recited by the instant claims,” wherein the
scFv linker can be a charged scFv linker. Id. at 5–6. The Examiner
concludes that, “even though the instant claims recite specificities not
explicitly recited by the claims of the [’446] patent, species of the instant
claims encompassed by the claims of the [’446] patent are disclosed in the
specification of the [’446] patent, and thus the instant claims are not
patentably distinct from the claims of the [’446] patent.” Id. at 7.
c) The ’705 application
The Examiner finds that the claims of the ’705 application are
directed, among other things, to a heterodimeric antibody having a “bottle
opener”/“triple F” structure. Ans. 7–8. The Examiner finds that the
specification and/or figure(s) of the ’705 application disclose a
heterodimeric antibody of the application comprising an anti-CD3 scFv, and
further discloses charged scFv linkers and an anti-CD3 scFv comprising the
amino acid sequences recited in the claims on appeal (i.e., SEQ ID NOs:
411, 413, 417, 420, 425, and 433). Id. at 8. Accordingly, the Examiner
concludes that, “even though the instant claims recite specificities not
explicitly recited by the claims of the [’705] application, species of the
instant claims encompassed by the claims of the [’705] application are
disclosed in the specification of the [’705] application, and thus the instant
claims are not patentably distinct from the claims of the [’705] application.”
Id. at 8.
d) The ’489 application (now the ’710 patent)
The Examiner finds that the claims of the ’489 application (now the
’710 patent) are directed to a composition “‘comprising’ [a] CD3-binding
scFv structure wherein the CD3-binding scFv CDR sequence are identical to
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the CD3-binding scFv CDR sequences recited by the instant claims” and
wherein “the scFv comprises a charged linker.” Ans. 9–10. The Examiner
finds that the specification and/or figure(s) of the ’489 application (now the
’710 patent) discloses that its inventive “compositions ‘comprising’ the
recited CD3-binding scFv structure include heterodimeric antibodies with a
‘bottle opener’ /‘triple F’” structure. Id. at 10. Accordingly, the Examiner
concludes that, “even though the instant claims recite specificities not
explicitly recited by the claims of the [’489] application, species of the
instant claims encompassed by the claims of the [’489] application are
disclosed in the specification of the [’489 application], and thus the instant
claims are not patently distinct from the claims of the [’489] application.”
Id. at 10.
2. Appellant’s contentions
Appellant contends that “whether the alleged genus claims of a
reference patent ‘encompass’ the present claims is not the standard for
determining obviousness-type double patenting” and that the Examiner
impermissibly relied on the disclosures of the ’652 and ’705 applications,
the ’489 application (now the ’710 patent), and the ’446 patent as prior art.
Appeal Br. 30–32, 36–37, 41–42, and 47–48.
The issue with respect to these rejections is whether the Examiner’s
reliance on the disclosures of the ’652 and ’705 applications, the ’489
application (now the ’710 patent) and/or the ’446 patent in making the
rejections is a permissible use of the disclosures to learn the meaning of
terms and interpret the coverage of the reference claims or an impermissible
use of the disclosures as prior art.
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B. Analysis
The predecessor of our reviewing court has explained that, in
considering whether a claim in an application is unpatentable on the basis of
obviousness-type double patenting, “the [reference] patent disclosure may
not be used as prior art.” In re Vogel, 422 F.2d 438, 441 (CCPA 1970). The
Court further explained in Vogel, however, that
[t]his does not mean that the disclosure may not be used at all.
. . . [I]n certain instances it may be used as a dictionary to learn
the meaning of terms in a claim. It may also be used as
required to answer the . . . question [of whether any claim in the
application defines merely an obvious variation of the invention
disclosed and claimed in the patent.] The disclosure . . . sets
forth at least one tangible embodiment within the claim, and it
is less difficult and more meaningful to judge whether that
thing has been modified in an obvious manner. It must be
noted that this use of the disclosure is not in contravention of
the cases forbidding its use as prior art, nor is it applying the
patent as a reference under 35 U.S.C. § 103, since only the
disclosure of the invention claimed in the patent may be
examined.
Id. at 441–442.
In this case, the claims on appeal all require a heterodimeric antibody
comprising (1) a first heavy chain comprising (a) a Fc domain and (b) a scFv
region that binds CD3 comprising a charged linker and variable heavy and
light chains comprising certain recited sequences; (2) a second heavy chain
having a recited structure; and (3) a light chain. Appeal Br. 50, 52 (Claims
App. A). Independent claim 101 and dependent claims further recite variant
Fc domains and require the charged scFv linker to comprise a particular
recited amino acid sequence. Id. at 52.
The Examiner has not pointed to any claim of the ’652 and the ’705
applications, the ’489 application (now the ’710 patent), or the ’446 patent
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that comprises all of these elements, but relies instead on the specifications
of the reference applications and patent to suggest the missing elements. As
discussed in greater detail below in the context of each cited reference
application and patent, we find that each of the rejections improperly relies
on the specification of the reference patent or application as prior art in
concluding that the claims on appeal are an obvious variant of the reference
claims,5 rather than merely using the reference specifications to construe the
reference claims and determine their coverage. Accordingly, we agree with
Appellant that the Examiner has not adequately explained how the claims on
appeal define an obvious variant of the cited claims of the ’652 and ’705
applications, the ’489 application (now the ’710 patent), and the ’446 patent.

1. The ’652 application
The independent claims (claims 48–50) of the ’652 application recite
a composition comprising an anti-CD3 binding domain comprising a
variable heavy chain and a variable light chain comprising the same amino
sequences recited in one or more of the claims on appeal. Appeal Br. 54
(Claim App.). As Appellant points out, however, these claims do not recite
the remaining antibody structure recited in the claims on appeal.
The Examiner asserts that reference claims are not patentably distinct
from the claims on appeal because the ’652 application claims “are directed
to a composition ‘comprising’ [an] scFv,” and the specification and figures
of the ’652 application discloses that “claimed compositions ‘comprising’

5 The Examiner has not suggested that the cited reference applications and
patents otherwise qualify as prior art.
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the recited CD3-binding scFv structure include heterodimeric antibodies
with a ‘bottle opener’ /‘triple F’ format” recited in the claims on appeal.
Ans. 4. Citing In re Basell Poliolefine Italia S.P.A., 547 F.3d 1371 (Fed.
Cir. 2008), the Examiner asserts that the rejection’s reliance on the
specification of the ’652 application is proper because the specification
“may be used to learn the meaning of terms and interpreting the coverage of
a claim.” Id. at 5 (internal quotation marks omitted).
We are not persuaded. We do not read Basell Poliolefine as
suggesting that reference disclosures may be used as posited by the
Examiner to determine whether the claims on appeal are an obvious variant
of the reference claim, merely because the disclosures relate to the claimed
invention of the reference patent or application in some way.
In particular, the reference specification in Basell Poliolefine was used
to interpret the coverage of “olefin,” a specific claim term. In contrast, in
the instant appeal, there appears to be no reasonable dispute that any
composition would be covered by claims 48–50 so long as they comprise the
anti-CD3 binding domains recited in those claims. Thus, the Examiner’s use
of the reference specification is not to construe the meaning of a claim term
or interpreting the coverage of the claim: Instead, the Examiner is relying
on the ’652 application’s disclosure of antibodies having a particular
structure, which is not specifically recited in reference claims 48–50, to
render obvious the claims on appeal. This is an impermissible use of the
reference disclosure as prior art.
Neither the Examiner nor Appellant has separately discussed the
dependent claims of the ’652 application. We note that some of these recite
additional limitations of the claims on appeal. For example, dependent
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claims 63–65 recite compositions that are antibodies comprising the anti-
CD3 binding domains of claims 48–50. Appeal Br. 56 (Claims App.).
Dependent claims 51–53 recite the compositions of claims 48–50 wherein
the anti-CD3 binding domain further comprises a scFv linker that covalently
attaches the variable heavy and light chains to form a scFv domain. Id. at
55. Dependent claims 54–59 recite compositions of dependent claims 51–53
and further recites that the composition comprises particular Fc domains
(e.g., human IgG1, IgG2, or IgG4 Fc domains). Id. at 55–56.
While these dependent claims recite structures that are more similar to
the heterodimeric antibody recited in the claims on appeal than independent
claims 48–50, the Examiner has not provided a separate, persuasive
explanation of how the claims on appeal are obvious variant of these
dependent claims. Accordingly, for the reasons discussed above, we find
that the Examiner has failed to establish a prima facie case that the claims on
appeal are not patentably distinct from the claims of the ’652 application.
Cf. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness
grounds cannot be sustained by mere conclusory statements; instead, there
must be some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness.”)).
2. The ’446 patent
The claims of the ’446 patent are directed to a heterodimeric antibody
having the same general structure as that recited in the independent claims
on appeal, except that they recite that the scFv region binds “a first antigen”
rather than CD3 in particular and further recite variant Fc domains
comprising specific amino acid substitutions. Appeal Br. 57 (Claims App.).
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The Examiner does not explain, except by relying on the ’466 patent
specification, why an antibody comprising a scFv region that binds CD3 in
particular, and that comprises particular recited sequences, is not patentably
distinct from an antibody comprising a scFv region that binds “a first
antigen.” In particular, the Examiner asserts that the ’446 patent
specification discloses, among other things, “[t]riple F heterodimeric
antibodies comprising an anti-CD3 scFv” having “CD3-binding . . . CDR
sequences identical to the CD3-binding scFv CDR sequences recited by the
instant claims.” Ans. 5–6. Citing In re Basell Poliolefine the Examiner
asserts that the rejection’s reliance on the specification of the ’446 patent is
proper because the specification “may be used to learn the meaning of terms
and interpreting the coverage of a claim.” Id. at 7 (internal quotation marks
omitted).
We are not persuaded. We do not read Basell Poliolefine as
suggesting that a claim to a species is not patentably distinct from a
reference claim to a genus simply because the reference specification
discloses the species. Rather, the Basell Poliolefine court found that the
claims on appeal and reference claims all, in essence, “consist of various
permutations of polymerization of olefins with various numbers of carbon
atoms using catalysts of titanium halides and aluminum alkyls,” even if
“some expressions are generic to others.” Basell Poliofine, 547 F.3d at
1378. Indeed, the court acknowledged that “a generic expression does not
render obvious all of the species that it encompasses,” but emphasized that
the claims at issue in Basell Poliofine “are both generic and specific to each
other in interchangeable ways, involving the same groups of species.” Id.
In contrast, the claims on appeal here recite only a species (an antibody
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comprising a scFv region that binds CD3 and comprising certain recited
sequences) within the broad genus recited in the reference claims (an
antibody comprising an scFv region that binds “a first antigen.”
Finally, we acknowledge that the Basell Poliofine court cites to the
fact that the reference patent specification refers to specific olefins, as an
indication that “those olefins were intended to fall within the meaning of the
[reference] claims” and as support for the conclusion that the claims on
appeal are invalid for obviousness-type double patenting. Basell Poliofine,
547 F.3d at 1378. We note, however, that ethylene, propylene, butane, etc.
were known in the art, whereas in this case the Examiner has provided no
evidence that a skilled artisan would have had knowledge of the sequences
recited in the claims on appeal, absent the disclosure in the reference
specification. On the record before us, therefore, the Examiner’s reliance on
the disclosure in the reference specification to render the claims on appeal
obvious appears to be an impermissible use of the reference specification as
prior art, rather than a permissible use of the specification as an aid to
interpret the coverage of the reference claim.

3. The ’705 application
As the Examiner appears to have done, we focus our analysis on claim
81 of the ’705 application because that claim is structurally the most similar
to the independent claims on appeal. In particular, claim 81 recites
composition comprising a heterodimeric antibody having the same general
structure as the independent claims on appeal; however, claim 81 does not
recite that its scFv region binds to CD3 or comprise particular amino acid
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sequences, and additionally recites specific amino acid substitutions in the
Fc domain. Appeal Br. 60 (Claims App. D).
The Examiner does not explain, except by relying on the ’705
application specification, why an antibody comprising a scFv region that
binds CD3 and that comprises particular recited sequences is not patentably
distinct from an antibody comprising a generic scFv region comprising a
variable heavy chain, a variable light chain, and a scFv linker covalently
attaching the two. In particular, the Examiner asserts that the ’705
application specification discloses “‘bottle opener’ /‘triple F’ heterodimeric
antibodies compris[ing] an anti-CD3 scFv,” an anti-CD3 scFv comprising
the sequences recited in the claims on appeal, and a charged scFv linker.
Ans. 7–8. The Examiner asserts, therefore, that “the heterodimeric
antibodies of the reference application include those with the ‘bottle
opener’ /‘triple F’ format comprising a CD3-binding scFv comprising a
charged linker with CDR sequences identical to the CD3-binding scFv CDR
sequences recited by the instant claims.” Id. at 8. Citing Basell Poliolefine,
the Examiner asserts that the rejection’s reliance on the specification of the
’705 application is proper because the specification “may be used to learn
the meaning of terms and interpreting the coverage of a claim.” Id. at 8
(internal quotation marks omitted).
For the same reasons discussed above with respect to the double
patenting rejection over claims of the ’446 patent, we find that the
Examiner’s reliance on the disclosures in the ’705 application to be an
impermissible use of the reference disclosures as prior art, rather than a
permissible use of the disclosures as an aid to interpret the coverage of the
reference claim.
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4. ’489 application (now the ’710 patent)
Independent claims 84–86 of the ’489 application (claims 1–3 of the
’710 patent) recite a composition comprising an anti-CD3 single chain
variable fragment (scFv) comprising a variable heavy chain and a variable
light chain comprising the same amino sequences recited in one or more of
the claims on appeal, as well as a charged scFv linker.6 Appeal Br. 64
(Claim App. E). As Appellant points out, however, these claims do not
recite the remaining antibody structure recited in the claims on appeal.
The Examiner asserts that reference claims are not patentably distinct
from the claims on appeal because the reference claims “are directed to . . . a
composition ‘comprising’ [a] CD3-binding scFv structure,” and the
specification and/or figure(s) of the reference application/patent disclose that
“claimed compositions ‘comprising’ the recited CD3-binding scFv structure
include heterodimeric antibodies with [the] ‘bottle opener’ /‘triple F’
format” recited in the claims on appeal. Ans. 9–10. Citing Basell
Poliolefine, the Examiner further asserts that the rejection’s reliance on the
disclosures of the reference application/patent is proper because the
reference disclosures “may be used to learn the meaning of terms and
interpreting the coverage of a claim.” Id. at 10 (internal quotation marks
omitted).
For the same reasons as discussed above with respect to the double
patenting rejection over claims of the ’652 application, we find that the
Examiner’s reliance on the disclosures in the ’489 application/’710 patent to

6 Dependent claims 96–110 of the ’489 application (now claims 4–18 of the
’710 patent) recite additional limitations relating to the scFv linker. Appeal
Br. 66–67 (Claims App. E).
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be an impermissible use of the disclosures as prior art, rather than a
permissible use of the disclosures as an aid to interpret the coverage of the
reference claim.

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
22, 83, 84, 86,
87, 89–91, 96,
97, 99–103
Obviousness-type
Double Patenting:
’652 application
22, 83, 84,
86, 87, 89–
91, 96, 97,
99–103
22, 83, 84, 86,
87, 89–91, 96,
97, 99–103
Obviousness-type
Double Patenting:
’446 patent
22, 83, 84,
86, 87, 89–
91, 96, 97,
99–103
22, 83, 84, 86,
87, 89–91, 96,
97, 99–103
Obviousness-type
Double Patenting:
’705 application
22, 83, 84,
86, 87, 89–
91, 96, 97,
99–103
22, 83, 84, 86,
87, 89–91, 96,
97, 99–103
Obviousness-type
Double Patenting:
’489 application
22, 83, 84,
86, 87, 89–
91, 96, 97,
99–103
Overall
Outcome
22, 83, 84,
86, 87, 89–
91, 96, 97,
99–103

REVERSED