Appeal No. 2003-0998 Page 3
Application No. 08/676,143
Discussion
Claim 25 is representative of the subject matter on appeal. Claim 25 is
directed to a library comprising synthetic receptors, in which each synthetic
receptor comprises a template to which at least two oligomers are attached; the
template can be a monocyclic aliphatic hydrocarbon, a polycyclic aliphatic
hydrocarbon, or a monocyclic heterocycle, and the oligomers can be oligoamide,
oligourea, oligourethane, oligosulfonamide, or peptide oligomers. The claim also
requires that each oligomer comprise at least three monomer units, and provides
that “receptors containing only subunits of trimesic acid and 1,2 diamino-
cyclohexane are excluded” from the scope of the claim.
The examiner rejected the claims as lacking an adequate description,
nonenabled, and anticipated by Lebl.
1. Written description
The examiner rejected claims 25, 31, 36, and 39 as containing new
matter, on the basis that “[t]he limitation ‘oligomers comprising three or more
monomers’ claimed in Claims 25, 31, 36, 39 has no clear support in the
specification and the claims as originally filed.” Examiner’s Answer, page 3.
Appellants point to working examples in the specification that comprise
oligomers having three monomer units. Appeal Brief, pages 5-6. Appellants
argue that even though the claims have been narrowed compared to their
original scope, the claims as written are reasonably described in the
specification.
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