Ex parte CACECI et al. - Page 11

          Appeal No. 94-3056                                                           
          Application 07/812,421                                                       

          depiction of this plasmid in Figure 9c.  It is well known that               
          the protein expressed from “amp ” is $-lactamase, whichR                                             
          cleaves the lactam ring of the antibiotic ampicillin.                        
          Transformed E. coli survive the addition of ampicillin to the                
          culture medium while untransformed E. coli die upon addition                 
          of the ampicillin antibiotic to the culture medium.  Thus, the               
          specified protein is capable of expressing the $-lactamase                   
          protein as well as the double fusion protein referred to in                  
          the specification as p10:WF8R:$-gal.                                         
               As set forth in In re Zletz, 893 F.2d.319, 321-322, 13                  
          USPQ2d 1320, 1322 (Fed. Cir. 1989)(citations omitted):                       
               ...during patent prosecution when claims can                            
               be amended, ambiguities should be recognized,                           
               scope and breadth of language explored, and                             
               clarification imposed. . . . An essential purpose                       
               of patent examination is to fashion claims that                         
               are precise, clear, correct and unambiguous.                            
               Only in this way can uncertainties of claim                             
               scope be removed, as much as possible, during                           
               the administrative process.                                             
          In our view, claim 37 encompasses at least one protein which                 
          appellants do not regard as their invention.  Clarification of               
          the claim is required.                                                       


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