Appeal No. 2001-0733 Page 5
Application No. 09/095,429
Appellants argue that the rejection is based on hindsight reconstruction
based on their own disclosure, and that at most, the rejection is based on the
theory that “obvious-to-try” and arrive at the claimed invention. We agree.
The first issue that we need address in deciding the patentability issues
under 35 U.S. C. § 103(a), however, is to determine what is being claimed. See
Key Pharmaceuticals v. Hercon Laboratories Corp., 161 F.3d 709, 714,
48 USPQ2d 1911, 1915 (Fed. Cir. 1998). The claims are drawn to an isolated
nucleic acid molecule encoding a recombinant ribonuclease from Rana pipiens
oocyte comprising a polypeptide of SEQ ID NO: 1, and wherein the amino acid
residues present at certain other positions are defined.
We initially note that while the preamble recites that the claim is drawn to
an isolated nucleic acid, the body of the claim is drawn to a polypeptide. From
the briefs and arguments, it is our understanding that appellants and the
examiner are interpreting the claim as requiring an isolated nucleic acid that
encodes the polypeptide defined in the body of the claim. Moreover, the claim
recites that the polypeptide encoded for by the claimed nucleic acid has the
amino acid sequence of SEQ ID NO: 1. While SEQ ID NO: 1 is a polypeptide of
defined amino acid sequence, the claim also states that there are certain
positions have amino acids that are not recited in SEQ ID NO: 1. Again, it is our
understanding that appellants and the examiner have interpreted the claim to
require that what is being claimed is not a nucleic acid encoding a polypeptide of
SEQ ID NO: 1, but a nucleic acid encoding a polypeptide, wherein the nucleic
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