Appeal No. 2001-2394 Page 4
Application No. 08/437,306
subsequences of SEQ ID NO:1 or which encode proteins that are
“essentially the same” as SEQ ID NO:2.
(b) Claim 18 reads on DNAs encoding at least a subsequence of SEQ ID
NO:2 “or biologically active fragment or mutation thereof.” Claims 19-
23 also encompass DNAs encoding biologically active fragments
and/or mutants of JE.
(c) Claim 24 reads on DNAs encoding “allelic variations” of at least a
subsequence of SEQ ID NO:1. Claims 19, 22, and 28 also read on
allelic variants of JE.
The examiner rejected all of the claims as indefinite and nonenabled.
1. Definiteness
The examiner rejected the claims under 35 U.S.C. § 112, second
paragraph, on the basis that several of the terms used in the claims rendered
them vague and indefinite. Among the terms the examiner objected to were
• “essentially the same” (“the metes and bounds of the term are
unclear. It is impossible to determine what is included or excluded in
this term,” Examiner’s Answer, page 3);
• “mutation” (“in the absence of a clear definition of the term ‘JE factor’
in the specification, the metes and bounds of the claims with respect
to ‘mutation’ are unclear,” Examiner’s Answer, page 3);
• “allelic variation” (“the recitation of this term is incorrect, because an
allelic variation is an inherited not a deliberately engineered mutation
in a recombinant DNA,” Examiner’s Answer, page 3); and
• “hybridizes”, “specifically hybridizes”, and “stringent” (“all relative and
conditional terms [that] renders [sic] the claims indefinite,” Examiner’s
Answer, page 4).
The examiner also rejected claims 6 and 7 as being improperly dependent on
claim 5, in that claim 5 recites a “DNA”, while claims 6 and 7 recite the “DNA
sequence of Claim 5.”
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