Appeal No. 1999-2330
Application No. 08/219,200
The appellants have also countered the examiner's position, suggesting that the
claim language is not indefinite as “[a]pplicants have provided the entire nucleotide
sequence for one B7 protein and described the functions which other members of the
class of proteins provided by the invention would have to have.” Brief, page 18. The
appellants argue that art searches in the field establish that “B7” is understood by those
of ordinary skill in the art to be the protein having the characteristics of the protein as
claimed. We agree.
Appellants argue that despite the fact that they do not disclose every known B7
molecule, the identification of other species in the class would not entail undue
experimentation because Applicants’ disclosure outlines a number of different assays
for the identification of B7 molecules as claimed. See specification pages 43, 61 and
66. Brief, pages 18-19. We also agree that the specification has provided reasonable
guidance to one of ordinary skill in the art to identify other species of B7 protein in the
class without undue experimentation. The rejection of claims 79-94 under 35 U.S.C.
§ 112, first and second paragraphs are reversed.
CONCLUSION
In view of the above, the rejections of claims 79-94 under 35 U.S.C. § 112, first
paragraph and claims 79-94 under 35 U.S.C. § 112, first and second paragraphs, are
reversed.
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