Appeal No. 2003-2084 Page 12
Application No. 08/241,061
that the analogue is produced by the standard immunological techniques, it is not clear
what are the the standard immunological techniques. The specification no where
teaches the’ standard immunological techniques[‘] useful in the claimed invention.”
Examiner’s Answer, pages 9-10.
Appellants respond that the phrase refers to ligand receptors and “one of skill in
the art would understand that ligand receptors produced by ‘standard immunological
techniques’ refers to methods or techniques used to prepare antibodies, or other ligand
receptors that are fragments of antibodies, and that retain the binding specificity of the
antibody (e.g., an Fab fragment, Fab’ fragment, etc.).” Appeal Brief, page 26.
In response to this argument, the examiner states ”it is not clear what are the
standard immunological techniques used to prepare the ligand receptor." Examiner’s
Answer, page 18. From the statement of the rejection and the response to appellants’
arguments it is apparent that the examiner has not used the correct legal standard in
making the rejection. “[T]he definiteness of the language employed [in a claim] must be
analyzed--not in a vacuum, but always in light of the teachings of the prior art and of the
particular application disclosure as it would be interpreted by one possessing the
ordinary level of skill in the pertinent art.” In re Moore, 439 F.2d 1232, 1235, 169 USPQ
236, 238 (CCPA 1971)(footnote omitted). Here the examiner has considered the
referenced term in a vacuum. There is no analysis of the prior art or the application
disclosure. On this record, the examiner has not established a prima facie case of
indefiniteness.
The examiner next questions the language found in claims 98-99 "in an amount
sufficient to inhibit binding of the linkage site .......of at least one ligand conjugate to an
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