Appeal No. 2001-2394 Page 8
Application No. 08/437,306
When terms of degree are used, “the issue is whether one skilled in the art at
that time would have been able to reasonably determine their metes and bounds
in the context they are used.” Ex parte Anderson, 21 USPQ2d 1241, 1249 (Bd.
Pat. App. Int. 1991). Here, as discussed above, the specification provides
absolutely no guidelines on what distinguishes a DNA sequence that is
“essentially the same” as SEQ ID NO:1 from one that is not. Thus, those of skill
in the art cannot, with any confidence, determine what subject matter is and is
not within the scope of the claims.
“[A]mbiguity in claim scope is at the heart of the definiteness requirement
of 35 U.S.C. § 112, ¶ 2.” Amgen, Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d
1313, 1342, 65 USPQ2d 1385, 1406 (Fed. Cir. 2003). A “claim is indefinite if,
when read in light of the specification, it does not reasonably apprise those
skilled in the art of the scope of the invention.” Id. The rejection of claims 5-8,
25-27, and 29-35 under 35 U.S.C. § 112, second paragraph, is affirmed.
2. Enablement
The examiner rejected all of the claims under 35 U.S.C. § 112, first
paragraph, “because the specification, while being enabling for an isolated or
recombinant nucleic acid encoding the amino acid sequence presented in SEQ
ID NO:2 or a nucleic acid which hybridizes to the complement thereof under
conditions of 4XSSC at 50°C or hybridization with 30-40% formamide at 42°C[,]
does not reasonably provide enablement for . . . a DNA sequence which
specifically hybridizes thereto.” Examiner’s Answer, pages 4-5. The examiner
went on to lay out in more detail why the specification is not enabling for DNAs
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