May 19, 1943
TO: Dr. Linus Pauling
FROM: J. P. Youtz
Subject: Process of Producing Antibodies
Application Serial Number 405,991
We enclose, herewith, for your information copy of the report of the examiners in
charge of this application, which will serve to keep you advised of the progress being
made and provide you with an opportunity to assist our attorneys, particularly Mr.
Richard Lyon in preparing a reply to the examiner’s report.
Department of Commerce
United States Patent Office
Richmond, Va
Please find below a communication from the PXAHTNER in charge of this application
Applicant: Linus Pauling
Conway P. Coe,
Commissioner of Patents
Ser. No. 405,991
Filed: Aug. 8, 1941
For Process of Producing Antibodies
Mailed May 11, 1943
Responsive to amendment filed July 4, 1942
Further references:
Articles cited as footnotes 2, 3, 4, 5, 7 to 12 of Jour. American Medical Association
of August 15, 1942, pages 1376 and 1377 on Artificial Antibodies - copy of J. A.
H. A. in Pat. Off. Lib. These articles are probably available at the Surg. Gen. Lib.
The claims are again rejected for lack of utility as no evidence has been presented
to show that the anti-bodies alleged to be produced by the method claimed have any
utility at all. Applicant points out that antibodies for methyl blue, the only specific
alleged antigen, has no known therapeutic use but such antibodies find utility in
methods of laboratory analysis. There is no showing of how such antibodies can be
used for analysis purposes. As the disclosure stands, it would be necessary to carry
out further experimentation in order to determine if antibodies are obtained by the
method and then to ascertain how to use them for some useful purpose. The claims
are accordingly rejected as biased upon a method lacking in utility. Any evidence
relied upon to prove utility should be presented and made a part of the record.
The claims are also rejected as being alternative in the use of an improper "Markush"
formula. Applicant is using the expression "a member of the group including antigens
and haptens". The only expression permitted under the "Markush" formula is a "material
selected from the group consisting of A, B, C, and D". See Ex parte Markush 1925 CD 126 and Ex parte Dotter 12 U.S.P.Q.
382. Thus this rejection nay be overcome by using "consisting of" in place of - including
- in the claims and using the singular instead of plural in describing the members
of the group.
The claims are rejected as being too broad, functional and indefinite in reciting
all proteins, globulins, haptens, denaturing agents, etc. On the basis of the limited
disclosure made, there are insufficient examples to warrant claims of this scope.
The claims are functional and indefinite as they define the process by the results
desired rather than by those steps which yield these results. For example the recitation
of "denaturing a protein" without reciting those steps which accomplish this purpose
renders the claims functional See Jenson v Franklin 74 F (2d) 501, In re Stack 479
0G 997 and In re Fischer 485 0G 761. The claims are too broad in the denaturing of
the protein step since if too much heat, for example, is employed on the protein to
destroy the same, the removal of the heat would not cause the formation of antibodies.
Claims 1 and 5 are rejected as alternative in the use of the word - or -.
The claims are rejected for lack of invention over the work of the prior investigators
set forth in the J. A. M. A. of Aug. 15, 1942 which in the footnotes give the citation
of the original articles, all of the pertinent ones of which antedate this application
and therefore constitute references against this case. The bottom of page 1376 and
top of page 1377 points out that applicant's method is "A process similar to that
originally adopted by the Soviet immuno-chemists". Footnotes 2, 3, 4, 5 and 7 are
citations of these articles of these prior investigators. The claims are therefore
considered as not being patentable over these old and similar methods previously used
for the purpose in view.
All the claims are rejected.
EXAMINER
This action must be responded to within six months from mailing date.
