Appeal No. 1996-1618
Application No. 07/876,804
artisan to prepare such glycoprotein receptors in soluble, active form (answer, page 4).
Appellants subsequently amended claim 29 as follows
29. A device as in Claim 23 wherein said ligand-bearing substance
is a lectin, said lectin having binding affinity for selected sugars[, and said
ligand-bearing substance is a glycosylated receptor protein with said
selected sugars attached].5
In response, the examiner stated that this deletion
renders the claim indefinite in that the claim no longer recites a ligand-
bearing substance. Moreover, the deletion of the phrase adds to the
problem of what the metes and bounds of the claimed invention are in as
much as it is unclear whether or not glycosylated receptor proteins are still
envisioned as falling within the scope of the claim. [SSEA, paragraph
bridging pages 3-4.]
First, a specification of a patent application is presumed to comply with the
enablement requirement of 35 U.S.C. § 112, first paragraph. An examiner may reject
claims in a patent application on the basis of an alleged failure of the applicants to comply
with the enablement requirement if the examiner can establish by a preponderance of the
evidence that there is reason to doubt the objective truth of the statements contained in the
specification. In re Marzocchi, 439 F.2d 220, 223-24,
169 USPQ 367, 369-70 (CCPA 1971). Here, both lectin:glycoconjugate (i.e., sugar
containing molecules, e.g., glycosylated membrane proteins) and avidin:biotin binding
5The double recitation of “said ligand-bearing substance” in claim 29 as set forth in the appendix of
claims attached to the brief appears to be an obvious typographical error which requires appellants to clarify
whether the lectin recited in the subsequently amended claim 29 refers to the “ligand-binding layer” or the
“ligand-bearing layer” of claim 23.
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