Ex parte ARUFFO et al. - Page 13




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


          art would not have been able to make and use the claimed                    
          invention, absent undue experimentation.  In re Wands, supra.               
               Claims 2, 5, 7, 10, 13 and 16 are rejected under 35 U.S.C.             
           112, second paragraph, as being indefinite in the recitation of           
          a region “substantially corresponding to an extracellular portion           
          of ICAM-2.”  It is not clear which proteins or polypeptides the             
          appellants intend.                                                          
               Claims 1, 3, 4 and 6 are rejected under 35 U.S.C.  102(b)             
          as being unpatentable over Altmann (Exhibit 1), Boyd (Exhibit 4)            
          and Dustin (Exhibit 7).                                                     
               As a preliminary matter we point out that the examiner’s               
          statement that “the claims are directed to a soluble ICAM-2/IgG             
          fusion protein,” is incorrect.  Answer, p. 2.  Only claim 8 is so           
          limited.  As we discussed above, the specification discloses the            
          construction of fusion proteins comprising ICAM-1 and ICAM-2                
          fusion proteins.  See Example 6.  Moreover, we also point out               
          that claims 1, 3, 4 and 6 are directed to any molecule having a             
          first region which is capable of binding to LFA-1.  This would              
          include, inter alia, ligands such as ICAM-1, ICAM-2, ICAM-3,                
          etc., and biologically-active portions thereof.  In addition, we            




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