Appeal No. 1999-1393
Application No. 08/242,344
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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