Appeal No. 94-1696
Application 07/811,129
corresponding to” should be revisited. The specification 6
definition notwithstanding, it does not appear that this phrase7
clearly sets forth the metes and bounds of the claimed invention.
In re Moore, supra; but cf. In re Mattison, 509 F.2d 563, 564,
184 USPQ 484, 486 (CCPA 1975). In view of all possible
substitutions described in the specification, it is not clear
whether a “region substantially corresponding to an
immunoglobulin constant region” encompasses the “immunoglobulin-
like” domains of ICAM-1 and ICAM-2. If so, references such as
Makgoba (Exhibit 10) and Nortamo (Exhibit 14) which teach
purified ICAM-1, and references, such as de Fougerolles (Exhibit
6In the first office action, mailed March 2, 1992 (Paper
No. 2), the examiner rejected claims 1 through 17 under 35 U.S.C.
§ 112, second paragraph, as being indefinite in the recitation of
a region which “substantially corresponds to” an immunoglobulin
constant region. Paper No. 2, p. 3. However, the examiner
withdrew the rejection “in response to the Applicants’
amendments.” Paper No. 6, mailed September 30, 1992, p. 4. To
that end we find that the appellants filed an amendment in Paper
No. 4, submitted July 6, 1992, which added the phrase “ligand
capable of binding to CD3 on said T cells, and a costimulatory,“
to claims 12 and 15. However, we do not find that these
amendments affect the rejected phrase. Rather, we find that the
appellants rely on the specification definitions at pp. 8-10.
Paper No. 4, p. 4.
7We recognize that the appellants have provided definitions
of “correspond” and “substantially” on pp. 8 through 10 of the
specification.
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