Appeal 2007-0628
Application 10/225,082
amount of the indicator in a patient to its presence or amount in persons
known to suffer from, or known to be at risk of, a given condition; or in
persons known to be free of a given condition” (Specification 9).
Claim 45 is a “Markush-type” claim (see MPEP § 803.02). Thus, the
Examiner requested an election-of-species. In response to that request,
Appellants elected S100β as the specific marker of cerebral injury and
caspase-3 as the non-specific marker of cerebral injury (Br. 8).1
2. WRITTEN DESCRIPTION
Claims 45, 47, 50, 53-69, and 73 stand rejected under 35 U.S.C.
§ 112, first paragraph, as failing to comply with the written description
requirement. The Examiner focuses on the recitation in the claims, in
addition to the specified protein markers, of “marker(s) related thereto.” The
Examiner notes that the Specification defines “related marker” to mean
“fragments of a particular marker that may be detected as a surrogate for the
marker itself” (Answer 5) but argues that that definition is an inadequate
description because the specification does not define “what the fragments of
S100β and caspase-3 are” (id.).
1 Appellants have requested that, in the event that the rejections on appeal
are reversed, the Board direct the Examiner to apply the procedures of the
MPEP relating to restriction/election of Markush claims in future
prosecution (Br. 4-5). We decline to do so. Restriction practice is a
procedural matter that is normally reviewed by way of petition, not appeal.
It is true that, in some cases, a restriction amounts to a de facto rejection and
is properly appealable (see, e.g., In re Haas, 486 F.2d 1053, 179 USPQ 623
(CCPA 1973)), but it would be premature to decide whether this case is in
that category.
4
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