Office Action in re-exam of Cabilly patent unfavorable to Genentech

US 6,331,415 (issued December 18, 2001) is entitled Methods of producing immunoglobulins, vectors and transformed host cells for use therein and has as its first claim

A process for producing an immunoglobulin molecule or an immunologically functional immunoglobulin fragment comprising at least the variable domains of the immunoglobulin heavy and light chains, in a single host cell, comprising the steps of:

(i) transforming said single host cell with a first DNA sequence encoding at least the variable domain of the immunoglobulin heavy chain and a second DNA sequence encoding at least the variable domain of the immunoglobulin light chain, and

(ii) independently expressing said first DNA sequence and said second DNA sequence so that said immunoglobulin heavy and light chains are produced as separate molecules in said transformed single host cell.

Although not issued until 2001, the application for the '415 was filed June 10, 1988 (app. 205419). Of priority, the '415 states: This application is a continuation of U.S. patent application Ser. No. 06/483,457, filed Apr. 8, 1983, now U.S. Pat. No. 4,816,567, issued Mar. 28, 1989.

In an Office Action on a re-examination requested by lawyer Lisa V. Mueller, the USPTO rejected the claims based on double-patenting. It may be that Genentech was doing something similar here to what Columbia University was doing with the Axel patents.

Of relevance to the patent reform discussion about HR 2795, it is apparent that more people are taking advantage of re-examination procedures.

[See also NY Times, Agency Takes a Preliminary Step to Revoke a Genentech Patent, Sep. 29]