Appeal No. 2003-2084 Page 13
Application No. 08/241,061
antibody or receptor . . . ." The examiner states that it is "not clear which amount would
be sufficient to inhibit binding of the linkage site to the receptor. The specification no
where teaches the amount necessary for the inhibition of binding of the linkage site.
Applicants are requested to include the amount of inhibitors required." Examiner's
Answer, page 10.
The examiner's request for appellants to "include the amount of inhibitors" in the
claims is unreasonable. As explained in In re Mattison, 509 F.2d 563, 184 USPQ 484
(CCPA 1975), it is proper for a patent applicant to define their invention through use of
functional amounts provided the specification sets forth sufficient guidance so that one
skilled in the art would be able to determine an appropriate amount. Here, the
examiner has focused on the lack of numerical limitations in the claims and has not
analyzed the specification of this application and explained why there is insufficient
guidance that would allow one to arrive at an appropriate amount.
Finally, the examiner rejects claim 102 for reciting "drug of abuse, metabolite of
drug abuse, and analogue of the drug abuse . . . and an analogue of a metabolite of a
therapeutic drug." The examiner merely states that "the specification does not recite
that the ligand can be either of those. The specification defines the ligand is a binding
partner of a receptor." As set forth above in regard to the examiner's rejection of claim
102 under 35 U.S.C. § 112, first paragraph (written description), we find that the
specification of this application does describe these compounds as being the ligand of
interest in the present invention.
The examiner's rejection under 35 U.S.C. § 112, second paragraph, is reversed.
5. Rejection of Claims 98-102 as Anticipated by Kinoshita.
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