Appeal No. 1999-1155
Application No. 08/241,253
The instant inventions fail to distinctly claim the invention because one
does not know a) specific substituents (optionally) substituted b) specific
functional groups c) specific biomolecule and d) specific multimer.
The terms a) “including” in amended claim 1, including monoclonal
antibodies b) fragments thereof are rejected under 35 USC 112, second
paragraph for lack of clear claiming. The use of the ‘including’, leaves the
claim language open; one to ask what else is included? Similarly,
‘fragments thereof’ is unclear. The cited terms in claim 1 is not a proper
claim structure in this country.
To the extent that the examiner is concerned that the claims are broad, we
remind the examiner that, in and of itself, “[b]readth is not indefiniteness,” In re Gardner,
427 F.2d 786, 788, 166 USPQ 138, 140 (CCPA 1970). We agree with appellants that
“[a] person of skill in the art could read [a]ppellants’ claims and determine whether a
given claim fell within them.” Reply Brief, page 5. The rejection is reversed.
OTHER ISSUES
The Search
As discussed above, claim 1 is drawn to a monomeric or multimeric chelating
agent, wherein the chelating agent is a tetraazacyclododecane. Independent claim 5,
also drawn to a chelating agent, is narrower than claim 1 in the sense that it requires
two or more chelating moieties linked through a 4- to 8-membered carbocyclic ring; on
the other hand, claim 5 is broader than claim 1 in that no particular chelating moiety is
specified. The administrative file of this application indicates that a computer data base
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