Appeal No. 2000-0137 Page 4
Application No.08/646,558
The examiner rejected all of claims 32-37, 40-59, and 63 for lack of written
description and nonenablement. She also rejected most of these claims as
either anticipated by or obvious in view of the prior art, and as obvious variants of
the peptides claimed in Appellants’ ‘332 patent.1 However, we find the claims so
indefinite that we cannot reach the merits of the examiner’s rejections. We
therefore vacate the rejections on appeal and enter the following new ground of
rejection.
New Ground of Rejection
Under the provisions of 37 CFR § 1.196(b), we make the following new
ground of rejection: claims 32-34, 36, 40, 42-53, 56, 57, and 63 are rejected
under 35 U.S.C. § 112, second paragraph, as indefinite.
Claim 32 is directed to a cyclic peptide comprising, inter alia, the
tetrapeptide sequence “Xaa1-Xaa2-Asp-Xaa3 (SEQ ID NO:15), where Xaa1, Xaa2
and Xaa3 are each independently any aromatic or hydrophobic amino acid
residue with the proviso that when Xaa1 is Lys or Arg, Xaa2 cannot be Gly or
Cys.” Independent claims 51, 52, and 53 each also contain this language.
The specification in this case does not provide an express definition of
which amino acids are considered to be aromatic or hydrophobic. The language
of claim 32 itself, however, suggests that at least lysine (Lys), arginine (Arg),
glycine (Gly), and cysteine (Cys) are considered to be “aromatic or hydrophobic”
1 As noted above, the examiner has indicated that claims 38, 39, 60, and 61 are “allowable,
except for Seq. ID. No. 26 which contains Lys.” Examiner’s Answer, page 24. It is unclear from
the examiner’s statement whether these claims are allowable as written, or are not allowable
because they include SEQ ID NO:26. If a claim includes non-allowable subject matter, of course,
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