Appeal No. 94-4393
Application 07/692,921
Here, it appears that the examiner considered the definiteness of the word
“subspecies” in a vacuum. This is incorrect. Rather, the examiner must analyze the
supporting disclosure of this application and relevant prior art, e.g., the twelve references
cited in the Amendment After Final rejection (Paper No. 18, September 3, 1993).
The examiner should also note that claims 9 through 13 do not use the word
“subspecies” but rather, are directed to so-called heparin fractions. The examiner has not
found the word “fraction” to be indefinite. It appears from reading the specification of this
application that appellants use the two words interchangeably. If so, since the examiner
has no apparent problem with appellants using the word “fraction,” this issue might be
simply resolved by the examiner allowing appellants to amend the relevant claims to use
the word “fraction” or “fractions” instead of the objected to word “subspecies.”
Adequacy of Prior Art Search
1. Classes and Subclasses.
The “SEARCHED” portion of the file jacket of this application indicates that a single
class and subclass, Class 530, Subclass 328, has been searched by the examiner. That
subclass appears to be most relevant to the 10 amino acid polypeptide set forth in claim 6
on appeal. It does not appear that the examiner’s search of the classes and subclasses
took into account all of the claims on appeal. It would appear that classes and subclasses
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Last modified: November 3, 2007