Appeal No. 2005-0412 Page 4
Application No. 09/682,968
claimed invention binds to and reduces “the enzymatic activity of dipeptidyl
peptidase (DP IV) and DP IV-analogous enzymes.”
Claim 3:
As appellants correctly point out (Brief, page 7), claim 3 is drawn to a
Markush group of “effectors.” Also, as appellants correctly point out (id.), claim 3
lists, inter alia, “inhibitors of DP IV expression.” There is no evidence on this
record to demonstrate that a molecule that (1) inhibits the “expression” of a DP
IV, or DP IV-analogous enzyme would also (2) “bind to” the enzyme and thereby
reduce its enzymatic activity. Thus, there is no evidence on this record that a
molecule that inhibits the “expression” of an enzyme would be considered an
“effector,” as the term is defined in the art.3
Therefore, we find the term “effector” as set forth in claim 3 to be
indefinite. Accordingly, we affirm the rejection of claim 3 under 35 U.S.C. § 112,
second paragraph.
Claim 1:
We limit our discussion to representative independent claim 1. Claims 2,
4 and 5 will stand or fall together with claim 1. In re Young, 927 F.2d 588, 590,
18 USPQ2d 1089, 1091 (Fed. Cir. 1991).
As discussed above, appellants assert (Brief, page 6), the term “effector”
has a definite meaning in the art. Specifically, the term “effector” refers to “a
molecule that binds to enzymes and either increases or decreases the[ir]
enzymatic activity.” Id. Claim 3, however, depends from claim one and refers to
Page: Previous 1 2 3 4 5 6 7 Next
Last modified: November 3, 2007