Appeal No. 94-0224
Application 07/322,604
439 F.2d 220, 223, 169 USPQ 367, 369 (CCPA 1971). Manifestly, this single
unsupported statement fails to meet this burden.
The rejection under 35 U.S.C. § 112, first paragraph, is reversed.
2. Definiteness
The examiner considers claim 46 to be indefinite in regard to its requirement
directed to “a DNA sequence hybridizable” with the structural gene sequence of Figure 10
of this application. The examiner indicates at page 4 of the examiner’s answer that this
claim requirement is indefinite because the claim “places no functional or size limits on
said DNA.” This is incorrect.
The last clause of claim 46 clearly requires that the “DNA sequence hybridizable” is
to have “said biological activity.” The specified biological activity is that which is set forth
in claim 45, i.e., “the biological activity of 2,4-D monooxygenase.” Thus, contrary to the
examiner’s assertion, claim 46 does require the “DNA sequence hybridizable” to have a
specified function.
The rejection under 35 U.S.C. § 112, second paragraph, is reversed.
3. Prior Art
Claim 45 is directed to a recombinant gene which comprises two DNA sequences.
The first DNA sequence encodes a polypeptide having the biological activity of 2,4-D
monooxygenase which is capable of being expressed in a plant. The second DNA
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