Appeal No. 2001-1264 Page 7
Application No. 08/819,630
Apart from the possible alternative interpretations of the scope of the claims on
appeal set forth, the argument posited by counsel at oral argument that the language
“except interleukin-8" in the claims on appeal serves only as a legal disclaimer of
certain undescribed subject matter adds only to the confusion.
Other Issues
1. Interleukin-8.
In considering the issues raised above in our new ground of rejection regarding
this aspect of the claimed invention, appellants should review the patent activity
referenced at page 6 of the specification and determine whether that activity resulted in
documents which are available as prior art under United States patent laws. If the
patent activity described in this portion of the specification did not result in legally
available prior art under the patent laws of this country, it may be that the questioned
language in the claims is surplusage and may be removed without engendering a prior
art rejection.
2. Hirai, Yokohari.
If prosecution is resumed on the claims on appeal, the examiner and appellants
should take a step back and reconsider the description of Yokohari as well as consider
for the first instance on this record the disclosure of Hirai. From our review of the
record, it is not clear that the examiner and appellants have considered Yokohari, and
now Hirai, using the correct legal standards.
Yokohari describes the treatment of body fluid from a patient suffering from
rheumatoid arthritis (RA) using an adsorbent which comprises a solid material having
an anionic functional group. See column 3, lines 65 - column 4, line 9. That RA
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