Appeal No. 2007-0091
Application No. 09/765,491
This argument does not clarify the scope of the claims. Appellant has
pointed to several disorders that are associated with lymphangiogenesis but
that is not the issue. Claims 4-6 are directed to a method of administering an
angiogenesis inhibitor to an individual in need of treatment of
lymphangiogenesis. The claims are not limited to methods of treating
individuals having one of the disorders listed in Appellant’s argument but
encompass treating an individual suffering from the “skin disorder”
lymphangiogenesis. Based on the evidence of record, however, it would
appear that lymphangiogenesis is a normal process and therefore one that
takes place in all individuals.
Those of skill in the art would not understand the meaning of the term
“individual in need of treatment” of lymphangiogenesis. The scope of
claims 4-6 is therefore unclear. Claims 4-6 are rejected under 35 U.S.C.
§ 112, second paragraph.
SUMMARY
We reverse the rejection for indefiniteness and the rejections of claims
4-6 over the prior art. We affirm the rejections of claim 17 as anticipated
administrative file but we have considered it only to the extent that it is
relevant to the new grounds of rejection. Normally, if additional briefing is
not requested by the panel at oral argument, any post-hearing submissions
are improper. See Ex parte Cillario, 14 USPQ2d 1079, 1079-80 (Bd. Pat.
App. Int. 1989) (“Once the oral hearing provided for by 37 CFR 1.194 [now
37 CFR 41.73] is held, ordinarily the only order of business left is the
board’s decision. . . . Nor is it appropriate to attempt, in such a [post-
hearing] paper, to present answers to questions presented by the panel, the
answers to which were not forthcoming at the hearing or were not fully
answered to appellant’s satisfaction.”).
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