Appeal No. 1995-4717
Application 07/876,288
molecular scaffolding structure." (Specification, page 12). The second step of the claimed
method requires the culturing of the transformed host cells under conditions suitable for
expression of the fusion protein. Claim 6 provides that the peptide is comprised of amino
acid residues that introduce conformation constraints on the peptide. Claim 24 provides
for a secondary library wherein the peptide of the tripartite fusion protein is a variation of a
lead peptide sequence.
The rejection under 35 U.S.C. § 112, second paragraph
Claims 2 through 7 stand rejected under 35 U.S.C. § 112, second paragraph, as
being indefinite for failing to particularly point out and distinctly claim the subject matter
which applicant regards as the invention.
The examiner states that the phrase "where n is at least 3" (claim 2) fails to set
forth a closed limit in the number of members of the Markush group in which it appears and
therefore the number of members is indefinite (Answer, page 6). In determining whether
claim language runs afoul of the second paragraph of 35 U.S.C.
§ 112, we must analyze the definiteness of the language employed in claims not in a
vacuum, but always in light of the teachings of the prior art and the application disclosure
as it would be interpreted by one possessing the ordinary level of skill in the pertinent art.
In re Sneed, 710 F.2d 1544, 1548, 218 USPQ 385, 388 (Fed. Cir. 1983); In re Angstadt,
537 F.2d 498, 501, 190 USPQ 214, 217 (CCPA 1976). The claims are deemed definite
so long as they reasonably apprise one of ordinary skill in the art of their scope. In re
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