Appeal 2006-3020
Application 10/109,374
. . . [T]he Examiner has noted that “the genus being
claimed is almost unlimited in size . . . , as it attempts to
define a genus of compounds by defining only a single
moiety that is present therein.” . . . [T]he genus is not
“unlimited,” in fact, the moiety “a)” must be a “LTB4
receptor binding moiety,” and must include “an aryl or
heteroaryl alkyl ether.”
(Br. 3-7 (emphasis Appellants’).)
In view of these conflicting positions, we frame this first issue:
Is the genus of claim 39, including the aryl and heteroaryl alkyl ether
moieties but otherwise defined functionally, supported by the specification
such that the skilled artisan would recognize the inventors had possession of
the claimed subject matter at the time the application was filed?
The Second Issue: 35 U.S.C. § 112 ¶ 2
The Examiner contends the claims are “indefinite for failing to
particularly point out and distinctly claim the subject matter which
Applicant[s] regard[] as the invention.” (Answer 5.) To support this
contention, the Examiner found the claims
incomplete for omitting essential structural cooperative
relationships of elements, such omission amounting to a gap
between the necessary structural connections. . . . Hence,
without a structural relationship, it is unclear what the
compounds would encompass, such as what other
components may or may not be present and the arrangement
thereof.
(Id.)
In response, Appellants contend:
[T]he phrase “Leukotriene B4 (LTB4) receptor binding
moiety comprising an aryl or heteroaryl alkyl ether” is
definite, as the meaning is clear to one skilled in the art. The
phrase further defines and limits those LTB4 receptor
5
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