Appeal No. 2003-2084 Page 11
Application No. 08/241,061
been withdrawn as to these two claim limitations, we conclude that the continued
maintenance of this aspect of the rejection is an oversight on the part of the examiner.
We will also reverse the remainder of the rejection. The examiner first questions
the phrase "ligand analogue conjugate" as used in claims 98-108 stating "[i]t is not clear
what does [sic] applicants mean by analogue." However, as set forth above, the
specification provides an explicit definition of "ligand analogue conjugate."
Furthermore, this aspect of the rejection is contrary to the issuance of the '524 patent
by the USPTO since claims of that patent are also directed to ligand analogue
conjugates.
The examiner next questions the phrase "analogue of linkage site" as used in
claims 98-99, stating "[t]he specification no where teaches what are the analogues of
the linkage site. And the specification no where teaches how are the analogues in the
linkage site can be [sic] prepared." Examiner's Answer, page 9. The specific questions
raised by the examiner in regard to this claim language appear to be more directed to
enablement rather than exploring the metes and bounds of the claim language. The
examiner has not established that one skilled in the art would have any difficulty in
determining whether a given compound would be considered an "analogue of the
linkage site" as this phrase is used in claims 98 and 99. Again, this aspect of the
rejection is in conflict with the issuance of the '524 patent by the USPTO since the
phrase "analogue of the linkage site" is used in claim 3 of the '524 patent.
The next aspect of the rejection is the use of the phrase “standard immunological
technique” in claim 98 with the examiner stating: “it is not clear what does [sic]
applicants mean by ’standard immunological techniques[‘]. Does applicant [sic] mean
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