Appeal No. 2003-2084 Page 6
Application No. 08/241,061
provides adequate written descriptive support for the language questioned by the
examiner.
If the examiner's real concern is that the language set forth in claim 102 does not
appear verbatim in the specification, the examiner should require appellants to comply
with 37 CFR § 1.75(d)(1)("The claim or claims must conform to the invention as set
forth in the remainder of the specification and the terms and phrases used in the claims
must find clear support or antecedent basis in the description so that the meaning of
the terms in the claims may be ascertainable by reference to the description.")
The rejection of claim 102 under 35 U.S.C. § 112, first paragraph (written
description), is reversed.
2. Written Description Rejection of Claims 98 and 99.
The rejection is explained as follows:
The specification description directed [sic] is directed to specific
crosstalk inhibitors which resemble the chemical structure which links the
ligand analogue to the carrier, for example the crosstalk inhibitors
disclosed in figures 1C to 1F, which clearly do not provide an adequate
representation regarding the open ended claimed composition comprising
the crosstalk inhibitors, ligand analogue conjugates attached to a protein
made of the presently claimed invention.
And moreover, applicants have not shown that they are in
possession of a composition which has plurality of different ligand
analogue conjugates, each different ligand analogue conjugate has a
different linkage site from the linkage of the other ligand analogue
conjugates.
Examiner’s Answer, page 5.
The examiner relies upon the University of Calif. v. Eli Lilly & Co., 119 F.3d 1559,
1567, 43 USPQ2d 1398, 1405 (Fed. Cir. 1997), stating "[a]lthough directed to DNA
compounds, this holding would be deemed to be applicable to any compound; which
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