Appeal No. 2004-2319 Page 8
Application No. 09/915,694
Under the provisions of 37 CFR § 41.50(b), we enter the following new
ground of rejection: Claim 12 is rejected under 35 U.S.C. § 112, second
paragraph, as indefinite. The scope of the claim is indefinite because of its
recitation of “a naturally occurring polynucleotide sequence at least 95% identical
to the polynucleotide sequence of SEQ ID NO: 2 . . . [and] an RNA equivalent
[thereof].”
The normal meaning of “polynucleotide” is a polymer made up of
nucleotides. Nucleotides are made up of a purine or pyrimidine base joined to a
sugar residue (deoxyribose in DNA, ribose in RNA) and a phosphate group.
Thus, according to its normal meaning, part (b) of claim 12 would encompass
both DNA and RNA. Read in light of the rest of the claim and the specification,
however, the scope of the claim becomes unclear.
First, SEQ ID NO:2 is a DNA sequence since it contains thymine (T)
residues. The equivalent RNA sequence would have uracil (U) in place of
thymidine. It is unclear, however, whether T and U would be considered to be
“identical” residues in computing whether a given polynucleotide was “95%
identical” to SEQ ID NO:2.
Second, if part (b) of claim 12 is intended to include both DNA and RNA,
then part (e) of the claim is entirely superfluous. That is, there would be no need
for a part (e) directed to “RNA equivalent[s]” unless parts (a) through (d) of claim
12 are intended to be limited to DNA, rather than encompassing both DNA and
RNA.
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