Interference No. 103,854
meaning of the term “encapsulated.” That is, the examiner understood the claims as being
directed to multimers that were within or enclosed by a liposome. Since this term was
adopted by Wallach without question, we must presume that they also adopted the
examiner’s meaning thereof. Accordingly, we find that claim 7 is directed to TBP multimers
which are enclosed by the liposomal membrane.
The problem now is that by amending the claim(s) to include the controversial phrase,
Wallach, inadvertently or not, changed their scope. As a result, Wallach’s amendment,
inadvertently or not, resulted in a claim which lacks written descriptive support in the
specification as required by 35 U.S.C. § 112, first paragraph. In re Rasmussen, 650 F.2d
1212, 1214, 211 USPQ 323, 326 (CCPA 1981)(“The proper basis for rejection of a claim
amended to recite elements thought to be without support in the original disclosure, ... is §
112, first paragraph...”). Wallach is reminded that “[t]he purpose of this provision is to ensure
that the scope of the right to exclude, as set forth in the claims, does not overreach the scope
of the inventor’s contribution to the field of art as described in the patent specification.”
Reiffin v. Microsoft Corp., 214 F.3d 1342, 1345, 54 USPQ2d 1915, 1917 (Fed. Cir. 2000).
Accordingly, we do not find that Wallach’s arguments address a limitation present in claim 7.
Having concluded that claim 7 is directed to a multimer which is enclosed by a
liposome, we now turn to the issue of whether said multimer would have been obvious to one
of ordinary skill in the art in view of the multimers set forth in Smith claim 39 and Wallach
claim 1, corresponding to the count, in combination with the teachings of Utsumi. To that
end, we find that Utsumi discloses that liposomes are useful as nontoxic carriers of
pharmaceutical agents, in general, and that they are particularly suitable for hydrophobic
drugs. Utsumi, p. 3362, col. 1, last para. Utsumi further discloses that the encapsulation of
said pharmaceutical agents results in reduced toxicity and may help to target the drugs to
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