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 105Page: Previous 98 99 100 101 102 103 104 105 106 107 108 109 110 111 112 NextLast modified: November 3, 2007