Appeal No. 1999-0623
Application No. 08/316,802
THE REJECTION UNDER 35 U.S.C. § 112, SECOND PARAGRAPH:
Claims 4-8, 10-16, 18-23, 26 and 28-38:
The examiner refers (Answer, page 4) to the Final Rejection8 and states that
“the state of the art is such that the [sic] undue experimentation would be required by
the public.” The Final Rejection states (pages 2-3) that “hydrophobic amino acid
and glycine residues is vague; what positions and which hydrophobic amino acids?
… Given that there are at least 4 hydrophobic naturally occurring amino acids, the
number of permutations for the nanomer containing one glycine will be 48.1 =
65,536. That is, an experimenter would have to construct 65,536 nanomers [sic]
determine which nanomers form the beta turn. The examiner submits that this effort
constitutes too much experimentation.”
The examiner did not use the correct legal standard to reach the conclusion
that the claims are indefinite. The examiner’s concerns regarding the amount of
experimentation bespeaks more of a 35 U.S.C. § 112, first paragraph, enablement
issue rather than one of indefiniteness under the second paragraph. However, here
the examiner makes no mention of the first paragraph of section 112. Instead, the
examiner bases his rejection on the second paragraph of section 112. We also
note appellant’s recognition (Brief, page 10, n. 4) that the statutory basis for this
rejection is unclear. As set forth in In re Moore, 439 F.2d 1232, 1235, 169 USPQ
236, 238 (CCPA 1971), claim language must be analyzed “not in a vacuum, but
always in light of the teachings of the prior art and of the particular application
8 Paper No. 44, mailed September 16, 1997.
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