Appeal No. 2001-2394 Page 6
Application No. 08/437,306
indefinite, but “[w]hen a word of degree is used the [fact-finder] must determine
whether the patent’s specification provides some standard for measuring that
degree.” Seattle Box Co. v. Indus. Crating & Packaging, Inc., 731 F.2d 818, 826,
221 USPQ 568, 574 (Fed. Cir. 1984).
In this case, claim 5 recites a “DNA comprising a sequence of nucleotide
bases the same or essentially the same as SEQ ID NO:1.” The specification
does not expressly define what degree of similarity is shared by sequences that
are “essentially the same.” In fact, as far as we can tell, the specification does
not use the phrase “essentially the same” at all. The closest comparable phrase
seems to be “substantially the same,” which is also left undefined. See page 3
(“Another aspect of the invention includes DNA sequences coding on expression
for a human JE polypeptide. One such DNA sequence is the same or
substantially the same as the approximately 772 nucleotide sequence which
appears below in Table I.”). Thus, the specification provides no standard to
measuring the degree of sequence similarity required by the claim term
“essentially the same” and we agree with the examiner that claims 5-8, 25-27,
and 29-35 are indefinite on that basis.
Appellants argue that court cases and issued patents support their
position that terms like “substantially” and “essentially” are not indefinite. See the
Appeal Brief, pages 8-10. Appellants also take issue with the examiner’s
position, from earlier in prosecution, that sequences could be considered
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 Next
Last modified: November 3, 2007