Appeal No. 1995-1304
Application No. 07/947,071
The situation is aggravated because claim 30, which
depends from claim 1, requires that the physiologically
relevant conditions be "selected from pH and temperature." It
is unclear from this usage whether appellants mean pH or
temperature in the alternative, or a combination of both pH
and temperature (for example, 7.1 pH and 37EC).
In the Appeal Brief, pages 4 and 5, appellants state
that:
The phrase "in physiologically relevant
conditions" refers to physical conditions which are
known or can be readily determined by an ordinarily
skilled artisan. Although these conditions may not
exclude a method involving physiological activity,
the relevant physiological conditions are themselves
readily available to or can be determined by an
ordinary artisan. A reference to exemplify such
conditions is made of record in the prosecution
giving a specific enabling source for the scope of
the claims. Other such sources are available for
enabling this invention. In other words, the
conditions are not variable, and the only
variability is from one set of conditions to another
and the source of information regarding such
conditions. Even for undocumented conditions there
is no variability of the conditions from time to
time and each new set of conditions can be readily
determined.
. . . [T]he "physiologically relevant conditions"
are not vague in that these conditions are the same
and definite for a given subset. That is, as noted
by [the] Examiner, differences are relevant from a
plant, to a spider, to a cyanobacterium, or to a
human but within each of these there are no such
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