Interference 102,728
“to make” a DNA construct within the scope of the count at the time the application was
filed, but we find that most of the arguments on pages 60-77 of Singh’s brief bear little
resemblance to those arguments.29 See Paper No. 151. In fact, we find the majority of
the arguments made in the referenced pages of Singh’s brief bear so little resemblance
to the arguments in the Opposition that we consider them to be new arguments.
Therefore, we will not consider the new arguments, on their merits, since they were not
timely filed. 37 C.F.R. § 1.655(a). Accordingly, the arguments set forth on pages 60-70
and 72-77 are herein DISMISSED.
c. Brake’s acquiescence to a new matter rejection
Singh argues that Brake’s abandonment of the Brake 1 application indicates that
it [Brake] acquiesced to a rejection made by the examiner under § 112, first paragraph,
concerning an amendment to the specification and, thus, Brake conceded the filing
date of the Brake 1 application. Paper No. 151, pp. 77-83.
We note that these arguments were raised in Singh’s Opposition (Paper No. 30)
to Brake’s Motion (2). In our discussion concerning said Opposition on pp. 29-31,
above, we considered these arguments to be directed to the written description
requirement of § 112, first paragraph, and found that they did not address a limitation
present in the count. However, since Singh’s discussion is provided in a separate
29 We acknowledge that Singh’s arguments on page 71, with respect to the
unpredictability of the oligonucleotide mutagenesis technique and the problems with the
Bal 31 digestion procedure were presented in the Opposition. Paper No. 30, p. 14.
However, since we discussed these arguments on pp. 40-41, above, we need not
address them here.
43
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