Appeal No. 94-3255
Application 07/673,264
find that the claim is directed to auxotrophic mutants capable
of excreting at least about 5 g/l lysine, 5 g/l aspartic acid,
5 g/l phenylalanine or 5 g/l tryptophan.
Finally, we do not agree with our colleague's conclusion
that the claim is indefinite for the reason set forth in
subsection (iv), above. In our view, the issue is not whether
the claim is unclear as to what is the quantity of each of the
amino acids that will satisfy the functional limitations
specified therein but, rather, whether the specification
disclosure would have enabled one skilled in the art to “make”
auxotrophic mutants capable of excreting at least about 5 g/l
lysine, 5 g/l aspartic acid, 5 g/l phenylalanine or 5 g/l
tryptophan. See the enablement discussion, below.
Accordingly, we affirm the examiner's rejection under
35 U.S.C. § 112, second paragraph, but we denominate our
affirmance as a new ground of rejection under 37 CFR §
1.196(b) in order to provide the appellants with a fair
opportunity to respond. In view of our holding that claim 55
is indefinite, we are unable to determine whether it complies
with the requirements of the first paragraph of § 112. Thus,
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