Appeal No. 2001-2394 Page 7
Application No. 08/437,306
“substantially” or “essentially” the same if they share at least 51% sequence
identity. See the Appeal Brief, page 10:
The examiner’s 51% identity figure would permit the claims to
encompass a 49% variation in sequence identity. . . . No reference
has been provided which would suggest that a person of skill in the
art would interpret the claims in such a manner. The examiner has
failed to provide any support for the interpretation. . . . One of
ordinary skill in the art would be able to determine whether a
nucleic acid sequence is essentially the same as the nucleic acids
specified in the claims.
This argument is not persuasive. The examiner’s rejection, as set out in
the Examiner’s Answer, is not based on an interpretation that the claims read on
sequences at least 51% identical to the recited sequences. See the Examiner’s
Answer, page 3. Thus, the reasonableness of that interpretation is not an issue
in this appeal and we take no position on it.
The only basis of the rejection in the Examiner’s Answer is that the claim
term “essentially the same” renders the claims indefinite because “the metes and
bounds of the claim are unclear. It is impossible to determine what is included or
excluded in this term.” Examiner’s Answer, page 3. Appellants’ argument on
that point amounts to “[o]ne of ordinary skill in the art would be able to determine
whether a nucleic acid sequence is essentially the same as the nucleic acids
specified in the claims.” Appellants, however, make no attempt to describe the
criteria that would be applied by those skilled in the art in making such a
determination.
It is true that terms of degree like “substantially” and “essentially” do not
automatically render claims indefinite. However, neither are they per se definite.
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