Appeal 2007-1627
Application 09/870,009
Appellants argue that “one of ordinary skill in the art would likely
consider the term ‘not naturally occurring in said DNA and that is
intentionally designed’ to mean a sequence which may be intentionally
designed by man, as opposed to a naturally-occurring sequence in DNA
(e.g., a sequence that is designed without any human intervention).”
(Appeal Br. 9.)
Appellants’ argument does not clarify what structural limitation is
conferred on the claimed DNA by virtue of its comprising an “intentionally
designed” DNA sequence. We conclude that the scope of claims 8-10, when
read in light of the Specification, is indefinite. We therefore affirm the
rejection of claims 8-10 under 35 U.S.C. § 112, second paragraph.
4. NONSTATUTORY SUBJECT MATTER
Claims 5, 8-12, 15, 17-27, and 30-34 stand rejected under 35 U.S.C.
§ 101 on the basis that the claims encompass naturally occurring humans
and animals, and therefore are directed to nonstatutory subject matter
(Answer 4). The claims have not been argued separately and therefore stand
or fall together. 37 C.F.R. § 41.37(c)(1)(vii).
The Examiner finds that the claims are directed to nonstatutory
subject matter because “they encompass viral genomes comprising LTRs
(long terminal repeats). In addition, any animal or person infected with such
a virus inherently encompasses the LTRs, thus the cells recited in the instant
claims encompass humans and animals.” (Answer 4.)
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