Appeal No. 1996-3330
Application 07/861,458
directed to a method of isolating a structural homologue of a higher organism which is
structurally homologous with a gene of a second lower organism.
Discussion
The rejection under 35 U.S.C. § 112, second paragraph
Claims 38-54, 58-60, 66-81, and 85-87 stand rejected under 35 U.S.C. § 112,
second paragraph, as failing to particularly point out and distinctly claim the invention. The
examiner urges that the language “structural homolog", "positioned phylogenetically
between", and "multiple resemblance in structural characteristics" render the claims in
which they appear confusing. (Answer, paragraph bridging pages 3-4). The examiner
acknowledges that "structural homolog" is defined at page 16 of the specification and that
several examples of what is encompassed by such structural characteristics are provided,
but urges that (Answer, page 4):
the skilled artisan would nevertheless be unable to determine
the entire universe of such "characteristics", and therefore
would not know what the metes and bounds of the claims is
(sic, are). The same discussion applies with regard to the
language "multiple resemblance in structural characteristics".
The examiner has the initial burden of demonstrating indefiniteness of the claims. In
re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). It is well
established that "definiteness of the language employed must be analyzed -- not in a
vacuum, but always in light of the teachings of the prior art and of the particular application
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