Appeal No. 1997-0483
Application No. 07/648,900
B. Rejection of claims 5, 6, 13, 16 and 19-22 under § 112, second paragraph
The legal standard for indefiniteness under 35 U.S.C. § 112, second paragraph, is
whether a claim reasonably apprises those of skill in the art of its scope.
In re Warmerdam, 33 F.3d 1354, 1361, 31 USPQ2d 1754, 1759 (Fed. Cir. 1994).
“[D]efiniteness 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 disclosure as it
would be interpreted by one possessing the ordinary level of skill in the pertinent art.” In re
Moore, 439 F.2d 1232, 1235, 169 USPQ 236, 238 (CCPA 1971). According to the
examiner, "claims 5 and 19 and those dependent therefrom (claims 6, 13, 16, and 20-22)
are indefinite" in reciting the term "consisting essentially of" (answer, p. 3, last para.)
because "it is unclear if this phrase includes variants of the recited sequence and if so
what the scope of the variants included is" (answer, p. 8, para. 2, emphasis in the original).
For reasons discussed supra, there has been no showing on this record by the examiner
that one skilled in the art would have any particular difficulty in determining the meaning of
"consisting essentially of" or of being reasonably apprised of the scope of the claims.
Therefore, this rejection is reversed.
C. Rejection of claims 5, 13, 19, 21 and 22 under § 112, first paragraph, enablement6
the entire protein, are biologically active.
6According to the examiner, the "first paragraph portion of the combined 35 U.S.C. § 112, first and
second paragraph rejection does not apply to claims 6, 16 and 20" (answer, p. 1, § (1) Status of claims).
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