Ex parte KAMBOJ et al.; Ex parte FOLDES et al. - Page 112


                  Appeal No.  1997-3221                                                                                        
                  Application No.  08/249,241                                                                                  
                          Claim 21 is rejected under 35 U.S.C. § 103 as being unpatentable over                                
                  Monyer in view of Puckett, Schofield and Grenningloh as applied to claims                                    
                  14 and 15 above, and further in view of Sugihara.                                                            
                          We reverse.                                                                                          
                  Rejection under 35 U.S.C. § 112, second paragraph:                                                           
                          The examiner states (Answer83, page 5) that “[s]ince no encoded amino acid                           

                  sequence is depicted in any of the referenced sequences, which can be read in any                            
                  one of three frames, and the length of these sequences are not divisible by three                            
                  then there is no antecedent basis for ‘the’ amino acid sequence encoded by any on                            
                  of these sequences.”                                                                                         
                          As stated in In re Morris, 127 F.3d 1048, 1054, 44 USPQ2d 1023, 1027                                 
                  (Fed. Cir. 1997):                                                                                            
                          [T]he PTO applies to the verbiage of the proposed claims the                                         
                          broadest reasonable meaning of the words in their ordinary usage as                                  
                          they would be understood by one of ordinary skill in the art, taking into                            
                          account whatever enlightenment by way of definitions or otherwise                                    
                          that may be afforded by the written description contained in the                                     
                          applicant’s specification.                                                                           
                          Appellants argue (Brief, page 10) that:                                                              
                          The nucleotide sequences of SEQ ID numbers 13, 14 and 15 are                                         
                          substitutions for the nucleotide sequence of SEQ ID NO:10.  The                                      
                          deduced amino acid sequence that corresponds to the nucleotide                                       
                          sequence of SEQ ID NO:10 is SEQ ID NO:11.  As shown in Figure 7,                                     
                          the nucleotide sequences of SEQ ID numbers 13, 14 and 15 are                                         
                          substituted for a specified nucleotide sequence of SEQ ID NO:10.”                                    



                                                                                                                               
                  83 Paper No. 20, mailed April 15, 1997.                                                                      

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