Appeal No. 1997-4272
Application No. 08/429,053
24. A monoclonal antibody directed specifically against proteins having
saccharose phosphate synthetase (SPS) activity of Sequence ID #11
or Sequence ID #12.
25. A monoclonal antibody of claim 24 directed against maize saccharose
phosphate synthase.
Paper No. 8 (filed March 7, 1996) and Paper No. 11 (filed October 21, 1996).
The examiner then entered a new ground of rejection in the Examiner’s
Answer. The examiner interpreted amended claim 24 to be limited to antibodies
directed to proteins having the amino acid sequence of Sequence ID No.’s 11 or
12, and objected to claim 25 under 37 CFR 1.75(c), as being broader than the
claim from which it depended. See the Examiner’s Answer, pages 9-10.
Appellants responded by canceling claim 25 but in doing so, noted that
“Applicants do not acquiesce in the Examiner’s Rejection.” See Paper No. 21
(filed July 25, 1997), page 2. Thus, Appellants apparently disagreed with the
Examiner’s interpretation of the scope of claim 24 but did not present an
alternative claim construction that would provide us with a definitive statement of
the intended scope of the claim.
We can find nothing in the specification or prosecution history that allows
us to confidently choose between the two plausible interpretations of claim 24.
Because we cannot determine the scope of claim 24, we have no way to
determine whether the claimed monoclonal antibodies would have been obvious
over the prior art. Therefore, we vacate the rejection of claim 24 under 35 U.S.C.
§ 103.
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