Ex parte KAMBOJ et al.; Ex parte FOLDES et al. - Page 105


                  Appeal No.  1999-2200                                                                                      
                  Application No.  08/896,063                                                                                
                         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                           



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