Appeal No. 2005-1745
Application No. 09/161,680
376, col. 1.1 Thus, by transforming this microorganism with vectors comprising a gene
which codes for specific enzymes and growing them overnight, the appellants are said
to generate enzymes having a new catalytic activity.
Discussion
Rejection I
The examiner contends that the claims 20 and 26 are indefinite in the recitation
of the phrases “Pseudomonas cepacia lipase AH,” “acylase” and “Candida antarctica
lipase A.” Answer, p. 3. The examiner argues that (i) she has not found P. cepacia
lipase AH from the same source as she found P. cepacia lipase PS; (ii) C. antarctica
lipase A is not known in the art; and (iii) “the term ‘acylase’ is unclear as to its exact
nature since several enzymes . . . have this synonym for their name.” Office Action,
mailed March 3, 2004, p. 4, para. 3. The examiner relies on an unidentified, and
unattached, attachment for support.
We point out that the analysis of whether the claims “set out and circumscribe a
particular area with a reasonable degree of precision and particularity” involves reading
the claims “in light of the teachings of prior art and of the particular application
disclosure as it would be interpreted by one possessing the ordinary level of skill in the
1 Greener et al. (Greener) from Methods in Molecular Biology, “An Efficient
Random Mutagenesis Technique Using an E. coli Mutator Strain,” vol. 57, Trowe, ed.
Humana Press, NJ, pp. 375-385(1996), of record. See, PTO form 1449 filed by the
appellants on November 30, 1999.
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