Interference 102,728
point out that Count 1 does not require “Gene*” to encode any particular polypeptide,
including EGF. Count 1 simply states that “Gene* encodes any polypeptide foreign to
Saccharomyces.”21 Accordingly, we find that all of Singh’s arguments with respect to
the EGF nucleotide sequence fail to address a limitation present in the count.
Second, to clarify the record, we point out that the examiner erred in making the
new matter rejection. The ‘325 Application, Paper No. 7, p. 2.
The examiner erred procedurally by rejecting claims, not one of which was
directed to a DNA construct having the EGF nucleotide sequence, as being based on a
specification which contains new matter. The ‘325 Application, Paper No. 7, p. 2.
Thus, even if we assume, arguendo, which we do not, that Brake’s amendment to the
EGF nucleotide sequence in the specification contained “new matter,” it was improper
to reject claims which do not contain the new matter under 35 U.S.C. § 112, first
paragraph. In re Rasmussen, 650 F.2d 1212, 1214, 211 USPQ 323, 325-326 (CCPA
1981). When “new matter” is added only to the specification, and not to the claims, the
proper course of action is for the examiner to object to the specification under 35 U.S.C.
§ 132.
More importantly, the examiner erred substantively in not permitting Brake to
amend the EGF sequence. The ‘325 Application, Paper No. 7, p. 2. It is well
21 We direct attention to our discussion on p. 22, above, wherein we find that the
Brake 1 specification discloses that in the formula L-(R-S-GAXYCX)n-Gene*)y, Gene* is
a gene other than "-factor, usually foreign to a yeast host, usually a heterologous
gene... ” [emphases added]. The ‘325 Application, p. 4, lines 10-11; p. 10, line 34-
p. 11, line 15.
30
Page: Previous 23 24 25 26 27 28 29 30 31 32 33 34 35 36 37 Next
Last modified: November 3, 2007