Appeal No. 1997-1713
Application 08/381,839
well settled that the initial inquiry in considering the patentability of the claimed invention as
encompassed by claims is the determination of the scope of the claimed invention by giving the broadest
reasonable interpretation to the claim terms consistent with appellants’ specification as it would be
interpreted by one of ordinary skill in this art. See generally, In re Morris, 127 F.3d 1048, 1054-55,
44 USPQ2d 1023, 1027 (Fed. Cir. 1997). It is readily apparent from the definitions of the claim terms
“purple membrane variant” and “bacteriorhodopsin variant” provided in appellants’ specification (page
7, lines 11-18) that the composition of claim 174 must contain at least one purple membrane having at
least one bacteriorhodopsin that differs from “wild-type” bacteriorhodopsin by one or more
modifications in the protein and/or chromophor moieties. It is further readily apparent from the plain
language of the claim that the “bacteriorhodopsin variant” must be capable of being “converted” at
“room temperature” into a “photoproduct” which has the specified properties including one of a change
in initial configuration or hydrolysis of the Schiff base bond, and both the stated “memory time” and the
stated “write/erase cycles.” It is still further readily apparent from the plain language of the claim that the
“auxiliaries” must be selected from the specified Markush group.
The examiner has not pointed out where in the applied prior art all of these claim limitations can
be found. Indeed, we fail to find any evidence of a “purple membrane variant” having a
“bacteriorhodopsin variant” as specified in the claims in any reference other than Oesterhelt et al. which
discloses one such variant in a “purple membrane.”5 We observe that Oesterhelt et al. teaches that this
4 We have focused on claim 17 because all of the claims numerically preceding this claim are dependent
thereon and the process of claim 18 requires the same composition defined therein.
5 The “bacteriorhodopsin variant” disclosed in this reference (e.g., col. 2, lines 42-49, col. 8, lines 34-
55, and Figs. 4 and 5) is “BRD85,96N” that is specified in appealed claim 3. In contrast, we find that the
“purple membranes” of Chang et al. (page 617, left column, first full paragraph) and Chen et al. (page
5190, left column, first sentence) are obtained from the same H. halobium “S-9” cell line. Appellants
have identified the bacteriorhodopsin contained in these membranes as “wild type” (e.g., brief, page 11,
first full paragraph, first new sentence). The examiner has not specifically challenged this characterization
in the answer or supplemental answer, but states in the answer that “bacteriorhodopsin . . . altered only
at the 96 amino acid positions [sic] [are] used in the examples of Chang et al.” (first finding in sentence
bridging pages 6-7). We can find no evidence in the record, including appellants’ specification (e.g.,
paragraph bridging pages 5-6), which establishes that the “S-9” cell line produces such a
bacteriorhodopsin variant.
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