Appeal No. 94-4377
Application 07/789,738
169 USPQ 236, 238 (CCPA 1971) (“Definiteness of the language
employed must be analyzed- not in a vacuum, but always in light
of the teachings of the prior art and of the particular
application disclosure as it would be interpreted by one
possessing the ordinary level of skill in the pertinent art”).
The examiner argues that the claims are vague and indefinite
in the recitation of “genome-length.” Answer, sentence bridging
pp. 2-3. According to the examiner, the referenced phrase does
not clearly set forth the boundaries of the promoter. Id., p. 3.
We find this position untenable primarily for two reasons.
First, we find that the examiner has improperly taken the
phrase “genome length” out of context. As pointed out by the
appellants, the referenced phrase is used to modify the term
“transcript.” Brief, pp. 12-13. In fact, the complete phrase as
it appears in the claim is “genome length transcript promoter.”
The examiner has not provided any reasons on this record as to
why the phrase, in its entirety, would not have been understood
by those having ordinary skill in the art. In re Moore, supra.
More importantly, as pointed out by the appellants, the
contested phrase is defined on p. 5 of the specification. Brief,
p. 11. It is not clear to us why the examiner has ignored these
3
Page: Previous 1 2 3 4 5 Next
Last modified: November 3, 2007