Appeal No. 2000-0600 Page 10
Application No. 08/642,268
Even if some of the claimed combinations were inoperative,
the claims are not necessarily invalid. “It is not a function of the
claims to specifically exclude ... possible inoperative
substances....” In re Dinh-Nguyen, 492 F.2d 856, 859-59, 181
USPQ 46, 48 (CCPA 1974)(emphasis omitted). Accord, In re
Geerdes, 491 F.2d 1260, 1265, 180 USPQ 789, 793 (CCPA
1974); In re Anderson, 471 F.2d 1237, 1242, 176 USPQ 331,
334-35 (CCPA 1971). Of course, if the number of inoperative
combinations becomes significant, and in effect forces one of
ordinary skill in the art to experiment unduly in order to practice
the claimed invention, the claims might indeed be invalid. See
e.g., In re Cook, 439 F.2d 730, 735, 169 USPQ 298, 302
(CCPA 1971).
On this record, the examiner failed to provide evidence demonstrating that the
number of inoperative combinations is significant enough to force one of ordinary
skill in the art to experiment unduly in order to practice the claimed invention.
The examiner also finds (Answer, pages 4-5) “[t]he level of undesirable
integrin binding is not synonymous with doses of specific drugs needed for
administration to treat a specific disease but rather the underlying physiological
contributing factor that may lead to one or more diseases that is present in the host
and this quantity is never defined.” In response appellants argue (Reply Brief, page
3) that “one of skill in the art would known that ‘undesired integrin binding’ is an
amount of binding which results in disease symptoms, e.g., the disease recited in
the specification, so the term is not indefinite.” We agree.
Furthermore, appellants argue (Brief, page 4) that “the ‘effective’ amount of
an agent required to inhibit an integrin is the amount of the agent which, in fact, does
inhibit the interaction of an integrin with its receptor and/or ligand. Since the amount
which provides such activity can be readily determine by one of ordinary skill in the
art, the meaning of ‘effective amount’ is known.” Again, we agree with appellants.
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