Appeal No. 1996-1618
Application No. 07/876,804
pairs are known in the art (See e.g., TABLE 2 in Wilchek, page 3). The examiner has not
challenged either the extrapolation of the avidin:biotin techniques exemplified in the
specification to lectin:glycoconjugate binding pairs or the ability of the skilled artisan to
select proper combinations of lectin and glycoconjugates. Rather, the examiner relies on
Yanagita to show that purification of some glycoconjugates, e.g., some glycosylated
membrane receptors, may present possible problems, problems which Yanagita not only
explicitly identifies but also suggests means of dealing with. For example, Yanagita
identifies “(1) Contaminants in detergents (3.3.1.a)” (page 73) as a possible problem and
discloses in § 3.3.1.a that some detergents, e.g., nonionic detergents, must be purified
before use, as well as two methods for purifying nonionic detergents (page 66). A
specification need not disclose what is well known in the art. See, e.g., Hybritech Inc. v.
Monoclonal Antibodies, Inc., 802 F.2d 1367, 1385, 231 USPQ 81, 94 (Fed. Cir. 1986).
Moreover, it is not a function of the claims to specifically exclude possible inoperative
combinations. Atlas Powder Co. v. E.I. DuPont De Nemours & Co., 750 F.2d at 1576,
224 USPQ at 414 citing In re Dinh-Nguyen, 492 F.2d 856,
858-59, 181 USPQ 46, 48 (CCPA 1974).
Second, the legal standard for indefiniteness under 35 U.S.C. § 112, second
paragraph, is whether a claim reasonably apprises those of skill in the art of its scope.
See, Amgen, Inc. v. Chugai Pharm. Co.,, 927 F.2d 1200, 1217, 18 USPQ2d 1016, 1030
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