Appeal No. 1997-2532
Application No. 08/427,569
Here, the claims appear to use these terms in a non-traditional manner which gives
rise to internal inconsistencies. For example, claim 17 recites an oligonucleotide which
consists of a first segment which comprises, i.e., is open to the inclusion of, nucleotides
over and beyond those of a specified a selected sequence, a second segment which
consists of a sequence at least 90% homologous to another sequence, and optionally one
or more noncomplementary sequences. Thus, the closed scope of the oligonucleotide of
claim 17 is open to the inclusion of additional, unrecited nucleic acids and optional
sequences.
As represented to us by appellants, this non-traditional term usage appears to have
4
arisen at the suggestion of the examiner. However, in view of the apparent
inconsistencies arising from this non-traditional term usage, appellants and the examiner
should review any allowable claims prior to issuance in light of the art-recognized definition
4 According to appellants,
The first and second segments [of the claimed probes and probe sets] as defined
constitute the only essential structural features of the optimized HTLV-1 probes. However,
since a user can included additional "filler" sequence that is not complementary to HTLV-1
(and is therefore unlikely to impact hybridization) as described in the specification, the
claims were originally written with the open claim language "comprising". In consultation
with the Examiner of the predecessor application, it was considered preferable to employ
the closed claim language "consisting of" and to specifically recite the noncomplementary
sequence as an optional element. Applicants previously adopted the former Examiner's
suggestions in an effort to expedite prosecution, and that language is reflected in the
pending claims. [Emphasis added, brief, fn. 1.]
- 11 -
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007