Appeal No. 1995-2374
Application 07/673,158
recognized to evolutionary origins by practitioners of this art and it would seem that that
definition is not what is intended here.”
Manifestly, the examiner has not used the correct legal standard in determining
whether claims 5 through 9 comply with the definiteness requirement of 35 U.S.C.
§ 112, second paragraph. As set forth in In re Moore, 439 F.2d 1232, 1235, 169 USPQ
236, 238 (CCPA 1971), this section of the statute only requires that the claims “set out and
circumscribe a particular area with a reasonable degree of precision and particularity.”
The court stated that claim language 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 skill in the pertinent art.” Here, all we have is
the examiner's unsupported conclusion that the word “homology” has been somehow
misused by appellants. The examiner has not provided any analysis based upon prior art
usage of this word or how the supporting specification of the application uses this word in
support of this position. Absent a fact based explanation from the examiner premised
upon the correct legal standard, the rejection can not be sustained.
The examiner has also rejected claims 5 through 9 under this section of the statute
on pages 7-8 of the Examiner's Answer. The examiner questions whether the reference to
“the sequence shown in Figure 1" in claims 5 and 6 refers to the amino acid sequence or
the nucleotide sequence depicted in this figure. As explained by appellants, it is quite
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