Appeal No. 2001-1264 Page 5
Application No. 08/819,630
forth that the subset of cytokines which possess chemotaxis are generically named
chemokines.
Where as here the metes and bounds of the claims cannot be readily
determined, significant misstatements of fact are made and the rejections are based
upon incorrect legal standards it is appropriate to vacate the rejections.
New Ground of Rejection Under 37 CFR § 1.196(b)
Claims 7 through 10 and 13 are rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite.
Each of the claims is directed to a method for removing a chemokine except
interleukin-8. In reviewing this claim language in light of the supporting specification,
we find the claims to be ambiguous as to their scope and meaning.
We believe the reason the exception for interleukin-8 appears in the claims on
appeal is the patent activity described by applicants at page 6 of the specification. In
an exchange held at oral argument, counsel stated his understanding that the language
of the claim excepting interleukin-8 from the claimed method is intended to serve as a
disclaimer of the subject matter in a patent rights enforcement sense. However,
counsel’s argument only adds to the confusion as to the scope and meaning of the
claims on appeal.
The claim language excepting interleukin-8 from the claimed method renders the
claims ambiguous and unclear. It is unclear from reading the claims in light of the
specification whether interleukin-8 is not removed by the claimed adsorbent because
the adsorbent is selected so that it adsorbs all chemokines except interleukin-8 or
whether the process is to be operated with an adsorbent which is capable of adsorbing
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