Appeal No. 2002-0798 Page 6
Application No. 09/107,688
and fail to describe reagents or other means to achieve these asserted
conclusory steps.
Additionally, the claims omit essential structures (including the
structure of the reactants and final product) and the necessary structural
cooperative relationships of elements, such omission amounting to a gap
between the necessary structural connections. See MPEP § 2172.01.
Id., page 5, lines 8-16. Again, the examiner characterizes applicants' claims as drawn
to methods for making combinatorial libraries "without metes and bounds as to the final
chemical structure" (Id., page 7, line 18). This suggestion that the appealed claims lack
sufficient clarity and definiteness to comply with the requirements of 35 U.S.C. § 112,
second paragraph, is anomalous in the context of a rejection under 35 U.S.C. § 112,
first paragraph, particularly because the examiner has expressly withdrawn a rejection
of claims 13, 29, and 30 under 35 U.S.C. § 112, second paragraph, as indefinite (Id.,
page 3, lines 8 and 9).
Likewise, the examiner argues that
the claimed combinatorial libraries [prepared by the claimed methods]
comprise compounds that are merely drug candidates. Any benefit to the
public (to one of ordinary skill in the art) is speculative. There is no basis
in the specification upon which to conclude that any of the compounds
(besides those specifically tested) encompassed by the library are, or will
turn out to be, biologically active after testing.
Thus, the biomedical research contemplated by applicants is to take
place at some future time, only when the properties of the claimed
compounds have been elucidated by the experimental methods
(screening assays) to which the specification alludes.
Absent a disclosure of those properties, the asserted utility of
biomedical research lacks specificity. Note, because the claimed
invention is not supported by a specific asserted utility for the reasons just
set forth, credibility cannot be assessed.
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