Ex parte ARUFFO et al. - Page 15




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


                corresponding to” should be revisited.   The specification      6                                                             
                definition  notwithstanding, it does not appear that this phrase7                                                                                                            
                clearly sets forth the metes and bounds of the claimed invention.                                                             
                In re Moore, supra; but cf. In re Mattison, 509 F.2d 563, 564,                                                                
                184 USPQ 484, 486 (CCPA 1975).  In view of all possible                                                                       
                substitutions described in the specification, it is not clear                                                                 
                whether a “region substantially corresponding to an                                                                           
                immunoglobulin constant region” encompasses the “immunoglobulin-                                                              
                like” domains of ICAM-1 and ICAM-2.  If so, references such as                                                                
                Makgoba (Exhibit 10) and Nortamo (Exhibit 14) which teach                                                                     
                purified ICAM-1, and references, such as de Fougerolles (Exhibit                                                              



                         6In the first office action, mailed March 2, 1992 (Paper                                                             
                No. 2), the examiner rejected claims 1 through 17 under 35 U.S.C.                                                             
                 112, second paragraph, as being indefinite in the recitation of                                                             
                a region which “substantially corresponds to” an immunoglobulin                                                               
                constant region.  Paper No. 2, p. 3.  However, the examiner                                                                   
                withdrew the rejection “in response to the Applicants’                                                                        
                amendments.”  Paper No. 6, mailed September 30, 1992, p. 4.  To                                                               
                that end we find that the appellants filed an amendment in Paper                                                              
                No. 4, submitted July 6, 1992, which added the phrase “ligand                                                                 
                capable of binding to CD3 on said T cells, and a costimulatory,“                                                              
                to claims 12 and 15.  However, we do not find that these                                                                      
                amendments affect the rejected phrase.  Rather, we find that the                                                              
                appellants rely on the specification definitions at pp. 8-10.                                                                 
                Paper No. 4, p. 4.                                                                                                            
                         7We recognize that the appellants have provided definitions                                                          
                of “correspond” and “substantially” on pp. 8 through 10 of the                                                                
                specification.                                                                                                                
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