Appeal No. 2003-0847 Page 10
Application No. 08/744,685
enabled, because, again, a claim may encompass inoperative embodiments and
still meet the enablement requirement of 35 U.S.C. § 112, first paragraph.
Because the rejection fails to set forth a prima facie case that the
specification fails to enable one skilled in the art to make and/or use the full
scope of the claimed invention, it is reversed.
3. 35 U.S.C. § 112, Second Paragraph
Claims 6, 15-17, 19, 21-27 and 29-35 stand rejected under 35 U.S.C.
§ 112, second paragraph, as being indefinite for failing to particularly point out
and distinctly claim the subject matter that appellant regards as the invention.
The examiner contends that the exact meaning for the phrase
“immunoglobulin gamma 2A locus” is unknown. The rejection is concerned that
the immunoglobulin 2A locus is not present in humans, and that it is not clear
that the locus is present in species other than mice. The rejection concludes that
“it is impossible for one skilled in the art to determine the metes and bounds of
the claims.” Paper No. 17, page 7.
The rejection appears to be concerned with the breadth of the claims, i.e.,
that the claims read on an immunoglobulin gamma 2A locus that is not derived
from murine cells. However, “breadth is not to be equated with indefiniteness,”
and the rejection is reversed. In re Miller, 441 F.2d 689, 693, 169 USPQ 597,
600 (CCPA 1971); see also In re Hyatt, 708 F.2d 712, 714-15, 218 USPQ 195,
197 (Fed. Cir. 1983).
4. 35 U.S.C. § 103(a)
Claims 6, 15-17, 19, 22, 23, 27 and 30 stand rejected under 35 U.S.C.
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