Appeal No. 2003-1722 Page 3
Application No. 09/041,343
The claim also requires that each oligomer comprise at least three monomer
units, and that each oligomer is attached to the template in such a way as to form
an amide, urea, urethane, sulfonamide, or ester bond.
The examiner rejected the claims as lacking an adequate description,
nonenabled, indefinite, and anticipated by Taddei-Peters or Lebl.
1. Written description
The examiner rejected claims 112, 117, and 125 as lacking adequate
descriptive support in the specification, on the basis that
[t]he present claims are directed to synthetic receptors in which
there is no claimed structure or other identifying characteristics
presented with respect to the final compounds or for that matter the
chemical reactants (template).
The specification description is directed to specific Nitrogen
containing monocyclic templates . . . (diaminopyrrolidine template,
diaminopi[p]eridine, and diaminoazepine), which are covalently
linked to two or more oligoamines which clearly do not provide an
adequate representation regarding the open ended claimed library
synthetic receptors of the instant invention.
Examiner’s Answer, page 4. The examiner’s desire for “adequate
representation” apparently was derived from University of California v. Eli Lilly
and Co., 119 F.3d 1559, 43 USPQ2d 1398 (Fed. Cir. 1997), which the examiner
characterized as holding that an adequate written description “requires a
representative sample of compounds and/or a showing of sufficient identifying
characteristics.” Id.
Appellants point to specific passages in the specification that support the
various limitations of the claims on appeal. See the Appeal Brief, pages 6-8.
Appellants also argue that the examiner’s reliance on Lilly is misplaced, because
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