Ex parte ARUFFO et al. - Page 9




                Appeal No. 94-1696                                                                                                            
                Application 07/811,129                                                                                                        


                and use the full scope of said invention, and for failing to                                                                  
                particularly point out and distinctly claim the subject matter                                                                
                which the applicant regards as the invention.                                                                                 
                         It is well established that any analysis of the claims under                                                         
                the first paragraph of  112 must first “begin with the                                                                       
                determination of whether the claims satisfy the requirements of                                                               
                the second paragraph.”  In re Moore, 439 F.2d 1232, 1235, 169                                                                 
                USPQ 236, 238 (CCPA 1971).  That is, in order to appreciate what,                                                             
                in fact, is the invention before us, the claims must “set out and                                                             
                circumscribe a particular area with a reasonable degree of                                                                    
                precision and particularity.”  Id.  Here, we find that the claims                                                             
                are indefinite in the recitation of a first region “having                                                                    
                binding specificity for CD11a/CD18."  It is not clear which                                                                   
                proteins or polypeptides the appellants intend.  For example, the                                                             
                specification teaches the construction of fusion proteins                                                                     
                comprising either ICAM-1 or ICAM-2 (Example 6); however, Makgoba                                                              
                (Exhibit 10)  discloses that several other molecules function as3                                                                                                         
                ligands for LFA-1.  Makgoba, p. 86, sentence bridging cols. 1-2.                                                              





                         3Exhibits 1, 4, 6, 7, 10 and 14 were attached to Paper No.                                                           
                5.                                                                                                                            
                                                                      9                                                                       





Page:  Previous  2  3  4  5  6  7  8  9  10  11  12  13  14  15  16  Next 

Last modified: November 3, 2007