Appeal No. 1998-2088
Application 08/372,712
Examiner’s Answer, pages 4-6.
The Examiner’s concern with the apparent lack of specific levels for TNF-a to
ascertain who is a “patient in need thereof” and the breadth of the claims form the
basis of the holding of indefiniteness.
These concerns stem from the Examiner’s consideration of the phrase
“patient in need thereof” in isolation, not only without the benefit of the disclosure
found in the specification, but also without the context of the claim as a whole. This
is not appropriate. In In re Mattison, 509 F.2d 563, 565, 184 USPQ 484, 486
(CCPA 1975) the court, citing In re Moore, supra stated that a criticized phrase
“does not stand in a vacuum” but must be considered in the context of the entire
claim and that the claims must then be read in light of the specification. The present
claims contain the limitations of “inhibiting TNF-a activity” and administering “an
effective antiinflammatory amount of a compound.” Upon reading the claims in their
entirety and in light of the guidance found at page 57 (discussed supra) as well as
relevant art of record, we conclude, contrary to the Examiner’s assertions, that the
metes and bounds of the claims can be readily determined by one of ordinary skill in
the art.
Fisher and Wispé are illustrative of the art around the time the invention was
made regarding TNF-a activity and the development of inflammatory responses
associated with different diseases and conditions. Fisher teaches that the release
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