Appeal No. 2000-0600 Page 9
Application No. 08/642,268
Antibodies, Inc., 802 F.2d 1367, 1385, 231 USPQ 81, 94 (Fed. Cir. 1986), “the
selection of useful solvents and formation of solvates is highly routine in this art.
Appellants need not provide in their specification a description of matter which is
common and routine in the art. A ‘patent need not teach, and preferably omits, what
is well known in the art.’” According to appellants’ (Reply Brief, page 2) “[b]ecause
selection of the appropriate solvents for forming solvates was routine to one of
ordinary skill in the art, the metes and bounds of the term were reasonably
determinable using only ordinary skill in the art.” We agree.
Accordingly, we reverse the rejection of claims 1, 2, 5-11, and 13-19 under
35 U.S.C. § 112, second paragraph.
Claims 7-11:
According to the examiner (Answer, page 4) the “[s]cope of method claims
7-11 is unknown as no particular disorder is recited in these claims only a
mechanism of action, namely diseases ‘associated with undesirable integrin
binding’.” The examiner finds (id.) the “claim language is of indeterminate scope
since it may read on diseases that are affected by integrin binding … in ways not
yet understood.”
In response, appellants argue (Reply Brief, page 3) “[w]hile it is possible that
there may be disease conditions caused by undesirable integrin binding which
cannot be treated successfully by the compounds of the invention, the existence of a
few inoperable embodiments does not render the invention non-enabled or of
indeterminate scope.” We agree. Cf. Atlas Powder Co. v. E.I. DuPont De Nemours
& Co., 750 F.2d 1569, 1576-77, 224 USPQ 409, 414 (Fed. Cir. 1984):
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