Appeal No. 2001-0889 Page 10
Application No. 08/459,086
antibodies to those having neutralizing activity,1 but argues that the claim would
be so understood when read in light of the specification. See id.
We disagree with Appellant’s interpretation of the claims. The claim
language requires only that the antibodies have “binding affinity” for the recited
peptides. The specification does not define “binding affinity” for an IFN-β-derived
peptide to also require neutralizing the activity of IFN-β. “Without evidence in the
patent specification of an express intent to impart a novel meaning to a claim
term, the term takes on its ordinary meaning.” Optical Disc Corp. v. Del Mar
Avionics, 208 F.3d 1324, 1334, 54 USPQ2d 1289, 1295 (Fed. Cir. 2000). Thus,
the phrase “binding affinity” is given its ordinary meaning – claim 7 encompasses
antibodies that bind to the recited peptides with any degree of affinity, and is not
limited to those that bind with sufficient affinity to neutralize the activity of IFN-β.
The examiner also rejected claims 7-9, 11, 12, and 31 as anticipated by
Kawade. We have concluded, supra, that all of these claims are unpatentable
under 35 U.S.C. § 102(b) because they are anticipated by Chow. We therefore
need not consider whether they are also anticipated by Kawade.
Other Issues
1. Amendments to the specification
During prosecution, Appellant requested certain amendments to the
specification, which the examiner refused to enter on the basis that the
amendments were new matter. See, e.g., Paper No. 6, filed June 2, 1995
1 “Appellants [sic], in an Amendment after Final . . ., amended Claims 7 and 18, so that they
would contain language describing the antibodies as having neutralizing activity against IFN-β.
This Amendment was not entered by the Examiner.” Appeal Brief, page 11.
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