Appeal No. 93-2460
Application No. 07/590,647
Oct. 16, 1992. Since we must consider the rejection as it
applies to the claims before us, we affirm Rejection I.
Rejection II
The examiner states on p. 5, para. 5 of the Answer that:
The recitation of claims 1-3 is confusing at [sic, as]
these claims describe a product rather than a method. A
straightforward reading of these claims would imply an in
vitro modification of an EPSP synthase enzyme from a plant
or bacterial source whereas the specification describes a
process of mutagenesis of the corresponding nucleic acid
sequence. Claim 1 should recite specific, active method
steps which should include the essential nucleic acid
intermediate.
In response the appellants argue that “[t]he examiner states
that she is ‘confused’ about what claims 1-3 actually describe:
either a product or a method. Applicants fail to understand the
source of this confusion.” And frankly, neither do we. That is,
contrary to the examiner’s remarks, we do not find that the
method of making a gene as described in representative claim 1 to
be directed to a product, or that the claim language in any
5(...continued)
removed one ground of rejection under 35 U.S.C. § 112, para. 2,
other grounds of rejection would have remained.” Advisory
Action, Paper No. 12, p. 1. The examiner correctly pointed out
that “[a]pplicants’ amendment would change the last residue of
the second amino acid sequence of claim 4 from T 6 A.” Id.
99
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