Appeal No. 2003-2084 Page 10
Application No. 08/241,061
knowledge of the linkage site of the ligand analogue conjugate in order to develop
analogues to the linkage site to evaluate as possible crosstalk inhibitors.
The examiner's evaluation of the Wands factors overemphasizes the examiner's
view of the breadth of the claims and does not take into account that the USPTO has
allowed claim 3 of the '524 patent as well as the fact that the starting point of the
present invention includes knowledge of the linkage site of the ligand analogue
conjugate.
The rejection of claims 98-102 under 35 U.S.C. § 112, first paragraph
(enablement), is reversed.
4. Rejection of claims 98-108 Under 35 U.S.C. § 112, second paragraph.
The examiner has set forth six reasons why the claims on appeal are indefinite
on pages 9-10 of the Examiner's Answer. Included are questioning of the phrase
"corresponding to" as it appears in claims 98-108 and the phrase "standard
immunological technique" as it appears in claim 98.1 However, the examiner states at
page 3 of the Examiner's Answer, "[t]he rejection of claims 103-108 'corresponding to';
and the rejection of claim 99 'standard immunological technique' under 35 U.S.C. 112,
second paragraph as indefinite has been withdrawn." Presumably the examiner
withdrew the rejection of claim 99 in regard to the phrase “standard immunological
technique” because the language does not appear in the claim. As the record stands,
the examiner on one hand withdraws the rejection in this regard and on the other hand
maintains the rejection. Given the examiner's positive statement that the rejection has
1 The examiner states at page 9 of the answer that claim 99 also contains this language.
However, the record copy of claim 99 (Paper No. 50) does not contain the phrase “standard
immunological technique.”
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