Appeal No. 2005-2235 Page 3
Application No. 09/038,894
“preventing a disease or disorder.” With regard to the phrase “administering
activation lowering therapy,” the examiner is unclear as to what “is being
administered to create such a desired effect?” Answer, page 6. The examiner
also inquires as to what is being activated. Id. Regarding the phrase “preventing
a disease or disorder,” the examiner is unclear as to “how the claim is to be
interpreted since prevention is not taught and one of ordinary skill in the art would
assume that the disease is totally absent when it is prevented.” Answer, bridging
paragraph, pages 6-7.
For clarity, we focus attention on the method set forth in appellants’ claim
321. The method of claim 32 comprises two steps:
1. assessing cell activation in a subject; and, if elevated,
2. administering activation lowering therapy,
Claim 32 requires that performance of the two-step method results in “preventing
a disease or disorder or reducing the risk of a poor outcome of a treatment of a
disease or disorder.” See e.g. Reply Brief, page 15, “[t]he prevention or
reduction in risk … is the outcome of following the steps of the method.”
The first step of appellants’ method requires the assessment of cell
activation in a subject. According to appellants (Brief, page 39), “it is clear to the
skilled artisan what is meant by ‘cell activation’ as used in the claims and defined
in the specification.” In this regard, we note that appellants’ disclose
(specification, page 16),
1 Claims 33-36, 38, 41 and 42 depend from claim 32. Claim 10, the only other independent claim
from which claims 11-18 depend, requires, inter alia, the same steps as set forth in claim 32.
Therefore, to focus the issues raised in this ground of rejection, we will discuss the issue with
reference to claim 32.
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