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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