Appeal No. 1996-3330
Application 07/861,458
of the claims based on the phrase "positioned phylogenetically between" (Answer, page 4)
focuses on whether one skilled in this art could make the selection of an organism which
would be "positioned phylogenetically between" two divergent organisms, i.e., a giraffe
and elephant or a cat and dog. However, the examiner offers no evidence which would
support the propositions that these determinations are necessary in order to determine the
metes and bounds of the present claims or that one skilled in this art could not readily
make such a determination. Additionally, we noted that independent claims 38 and 66
require that the second or lower organism be a "non-vertebrate phylum." Thus, the
examples offered by the examiner fall outside the scope of the claims. When viewed in
light of the above authority, we do not agree with the examiner that the metes and bounds
of the rejected claims would not be capable of being determined when read in light of the
specification and as one skilled in this art would interpret them. We, therefore, reverse the
rejection of claims 38-54, 58-60, 66-81, and 85-87 under 35 U.S.C. § 112, second
paragraph.
The rejection under 35 U.S.C. § 103
In rejecting claims 38-54, 58-60, 66-81, and 85-87 under 35 U.S.C. § 103, the
examiner urges that Chalfie teaches (Answer, page 5):
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