Appeal No. 1999-1393
Application No. 08/242,344
Claims 1-11, 14 and 15 are rejected under 35 U.S.C. § 103 as being
unpatentable over Moriyoshi in view of Puckett, Grandy and Zhou.
We affirm the rejection under 35 U.S.C. § 112, second paragraph. We
reverse the rejection under 35 U.S.C. § 103. We do not reach the merits of the
rejection under 35 U.S.C. § 102(b), and we remand the application to the examiner
for further consideration of the 102(b) rejection.
The rejection of claim 15 under 35 U.S.C. § 112, second paragraph:
As set forth in In re Zletz, 893 F.2d 319, 321-22, 13 USPQ2d 1320, 1322
(Fed. Cir. 1989):
[D]uring patent prosecution when claims can be amended,
ambiguities should be recognized, scope and breadth of language
explored, and clarification imposed. . . . An essential purpose of
patent examination is to fashion claims that are precise, clear,
correct, and unambiguous. Only in this way can uncertainties of claim
scope be removed, as much as possible, during the administrative
process.
The examiner refers (Answer79, page 4) to page 7, lines 22-25 of Paper No.
9 (mailed September 23, 1994 as the examiner’s First Action on the Merits) for the
basis of this rejection. At the cited page and lines of Paper No 9, the examiner,
referring to claim 15, states “[a]n oligonucleotide is a (emphasis on the singular)
nucleic acid and can not “comprise” a plurality of nucleic acids.”
We note appellants’ original response to this rejection (Paper No. 11,
received March 23, 1995), at page 9 appellants state “[t]he amendment to claim 15
should resolve the rejection for lack of clarity in the recitation of an oligonucleotide
comprising ‘at least about 17 nucleic acids.’ Claim 15 now recites ‘at least 17
105
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