Appeal No. 2002-1874 Page 6
Application No. 09/079,329
Examiner’s Answer, page 4.
Appellant argues that one of ordinary skill in the art would understand the
meaning of “blocking.” Appeal Brief, page 3. We agree.
The test for definiteness is whether one skilled in the art would understand
the bounds of the claim when read in light of the specification.” Miles
Laboratories, Inc. v. Shandon, Inc., 997 F.2d 870, 875, 27 USPQ2d 1123, 1126
(Fed. Cir. 1993). Claims are in compliance with 35 U.S.C. § 112, second
paragraph, if “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 specification makes clear that the D-arginine of the method blocks
the carbonyl containing compounds by means of a covalent bond. For example,
the paragraph bridging pages 5 and 6 of the specification states:
It is an object therefore of the present invention to provide a
method of removing toxic carbonyls and/or dicarbonyls, for
example from a living body by administering a therapeutically
effective dose of L- and/or D-arginine or an arginine-containing
compound to a living body, the arginine thereby chemically reacting
with the carbonyl group and preventing its reaction with native
tissues.
(emphasis added).
Because one skilled in the art would understand “blocking” to mean
blocking by covalent reaction, the rejection is reversed.
3. 35 U.S.C. § 103(a)
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