Appeal No. 1996-1281
Application 07/945,295
There appears to be confusion on the part of both the examiner and appellants
as to just what is encompassed by the claims presently on appeal. We note for
example the examiner's statements which would suggest that a protein falling within the
scope of claim 11 would need to have only a portion of the amino acid sequence of
human Mi-2 antigen (SEQ ID NO. 2.) (Answer, page 2). The examiner also suggests
that while the isolated protein must be specifically immunoreactive with an autoantibody
that binds specifically with human Mi-2 antigen, this does not limit the site of binding to
only that portion which has the same amino acid residue sequence which is shared with
human Mi-2 protein. (Id). Similarly, the appellants have argued that the claims are
directed to human Mi-2 antigen. (Principal Brief, page 13). It is not clear what language
in claim 11 would limit the claimed isolated protein to the human antigen. Further, in
responding to the rejection under 35 U.S.C. § 112, second paragraph, appellants have
stated:
it is clear that the protein could have sequence other than the sequence
set forth in Sequence ID No. 2, so long as a portion of the protein had a
sufficient portion of the sequence set forth in Sequence ID No. 2 to be
immunoreactive.
Thus it falls to both the examiner and appellants to begin the consideration of the
issues raised by Targoff with a determination as to just what is being claimed.
In our view, the claims can reasonably be interpreted in at least two ways. The
first interpretation would find that the claim is directed to a protein which includes within
its amino acid sequence the whole or portion of the amino acid sequence of SEQ ID
NO. 2. The second interpretation would find that the claim is directed to a protein of
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