Appeal 2006-3020
Application 10/109,374
The Second Issue: 35 U.S.C. § 112, ¶ 2
Likewise, we conclude claim 39, defined by both function and
structure, particularly points out and distinctly claims the subject matter
Appellants regard as their invention. The Examiner’s bases for concluding
otherwise appear to rest on the functional language and breadth of claim 39.
However, the law is quite settled on these points: Neither the use of
functional language nor claim breadth violates the second paragraph of
§ 112. To affirm a rejection under this statutory provision, we must
conclude the “language used is not precise and definite enough to provide a
clear-cut indication of the scope of subject matter embraced by the claim.”
Swinehart, 439 F.2d at 213, 169 USPQ at 229. In this case, we cannot draw
such a conclusion and thus reverse the § 112, ¶ 2 rejection.
The Third Issue: 35 U.S.C. § 103(a)
With respect to the third issue before us, we find Dunn’s teaching that
chelator-derivatized biomolecules, including receptor binding molecules,
can be used to deliver diagnostic or therapeutic agents to a target, would
have motivated the skilled artisan to derivatize Dereu’s LTB4 receptor
binding moieties, with a reasonable expectation of success. Thus, we
conclude the invention of claim 39 would have been obvious to one of
ordinary skill in the art at the time the invention was made.
Appellants argue “there is no teaching or suggestion on how to
combine a LTB4 binding moiety with a chelator.” (Br. 10.) However, based
on Dunn’s teachings and Appellants’ own admissions, no such teaching or
suggestion is needed for the skilled artisan to have a reasonable expectation
of success. (See Dunn, col. 5, ll. 34-36 (“Coupling of the chelating moieties
to biomolecules can be accomplished by several known methods.”); Spec.
14
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: September 9, 2013