Appeal No. 1999-2330
Application No. 08/219,200
To that end, we also note that during ex parte prosecution, claims are to be given their
broadest reasonable interpretation consistent with the description of the invention in the
specification. In re Zletz, 893 F.2d 319, 321, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989).
We interpret the term ?B7" consistent with the specification pages 6 and 11 as
that described in Freeman 1989, which is now referred to in the art as B7-1.
We interpret the term ?B7 fusion protein” and ?soluble” according to their
ordinary definitions (a protein consisting of B7 fused to another protein, and water
soluble, respectively) which is consistent with their specification usage.
We interpret the term ?inhibit” in the claims, consistent with the specification
page 64 and Figures 12 and 16, to include something less than complete inhibition or
blocking of the CD28 receptor on T cells, such as binding or blocking a portion of CD28
on CD28 positive T cells with soluble B7 protein, such that some inhibition of T cell
proliferation occurs.
35 U.S.C. §112, first paragraph
Claims 79-94 stand rejected under 35 U.S.C. §112, first paragraph, for lack of
enablement. The Answer suggests that the claims contain subject matter which was
not described in the specification in such a way to enable one of ordinary skill in the art
to which it pertains to make and/or use the invention. Answer, page 2. The examiner's
statement of rejection, however, appears to focus on lack of enablement as to the how
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