Appeal No. 2002-0427 Page 10
Application No. 08/179,656
whether they are also nonenabled. Therefore, we do not reach the examiner’s
enablement rejection.
Other Issues
If the claims are re-filed or subject to further prosecution, the examiner
should consider whether the present language of the claims is sufficiently definite
to pass muster under 35 U.S.C. § 112, second paragraph; that is, whether “the
claims, read in light of the specification, reasonably apprise those skilled in the
art and are as precise as the subject matter permits.” Hybritech, Inc. v.
Monoclonal Antibodies, Inc., 802 F.2d 1367, 1385, 231 USPQ 81, 94-95 (Fed.
Cir. 1987).
The claims contain several phrases that give rise to ambiguity. First, claim
1 is directed to a protein that “consist[s] of Leukocyte Derived Growth Factor 2
(LDGF2).” The specification discloses that LDGF2 has the amino acid sequence
of SEQ ID NO:17. The first part of the claim therefore would seem to suggest the
claimed protein has the amino acid sequence of SEQ ID NO:17. The claim goes
on to state, however, that the claimed protein differs from SEQ ID NO:17 by at
least one substitution, deletion, or insertion. These limitations appear to conflict:
how can a protein consist of LDGF2 if it can be anything but SEQ ID NO:17?
In addition, claim 1 states that the claimed protein has “immunoreactivity.”
The specification does not provide an express definition of “immunoreactivity,”
suggesting that the term is being used in its art-recognized meaning; specifically,
the protein is reactive with components of the immune system (e.g., antibodies).
The prosecution history, however, suggests a different meaning: when the
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