Appeal No. 2003-2084 Page 7
Application No. 08/241,061
requires a representative sample of compounds and/or a showing of sufficient
identifying characteristics; to demonstrate possession of the claimed generic(s)."
Examiner's Answer, page 6.
Appellants argue, inter alia:
Moreover, Appellants respectfully submit that the specification as
filed clearly indicates to the skilled artisan that Appellants were in
possession of the claimed invention at the time of filing. The specification
describes the common structural attributes shared by crosstalk inhibitors
as defined in the instant specification (i.e., that each is an analogue of a
linkage site), as well as common functional attributes shared by crosstalk
inhibitors (i.e., that each inhibits crosstalk caused by receptors that
recognize the linkage chemistry rather than the ligand). The specification
follows this general description of the common structural and functional
attributes of crosstalk inhibitors by describing the synthesis of numerous
specific crosstalk inhibitors (see, e.g., examples 4-13 and 22). Finally, the
specification also describes methods for testing the effectiveness of
crosstalk inhibitors in ligand-receptor assays (see, e.g., example 30).
Appeal Brief, paragraph bridging pages 39-40. In response, the examiner states:
Appellants [sic] arguments regarding the possession of the claimed
composition at the time of filing have been considered, but are not
persuasive. Appellants argue that the instant claimed composition
comprise a mixture of ligand analogue conjugates, cross talk inhibitors
and ligand receptors. It is noted that claim 98 composition does not have
the ligand receptor as in appellants [sic] argument. Appellants assert that
the specification describes the common structural attributes shared by
cross talk [sic] inhibitors as defined, as well as common functional
attributes shared by cross talk [sic] inhibitors. Appellants [sic] assertions
have been considered but are not persuasive. The narrow scope of
examples directed to specific crosstalk inhibitors are clearly not
representative of the scope of the presently claimed composition.
Examiner's Answer, page 13, 2nd paragraph (emphasis in original).
In considering the matter, we find ourselves in agreement with appellants'
position again. Appellants have carefully explained how the specification reasonably
describes a genus of crosstalk inhibitors. The examiner has focused upon the so-called
"open ended claimed composition" (Examiner's Answer, page 5) and "narrow scope of
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