Appeal No. 1997-2510
Application No. 07/868,539
effectiveness of a prosthetic device is more properly left to the Food and Drug
Administration (FDA).”). Upon further prosecution, the examiner should clarify
this issue.
V. Antisense References:
The examiner refers (Answer, pages 16-17) to the Infectious Disease
Weekly, the Genesis Report-RX, Gura, Wagner, and Stull to support his
arguments. The examiner, however, has failed to explain the nexus between
these references, which discuss antisense technology, and the claimed
invention. In this regard, we note appellant’s statement (Brief, page 5) that “the
[m]olecules constructed according to the claimed method of the present
invention are NOT designed to interact (i.e., specifically hybridize) with the DNA
and/or RNA of the host or virus.” Upon further prosecution, the examiner should
address appellant’s comment, and explain the nexus between the claimed
invention and any reference relied upon by the examiner.
THE REJECTION UNDER 35 U.S.C. § 112, SECOND PARAGRAPH:
As set forth in Amgen Inc. v. Chugai Pharmaceutical Co., Ltd., 927 F.2d
1200, 1217, 18 USPQ2d 1016, 1030 (Fed. Cir. 1991):
The statute requires that “[t]he specification shall conclude
with one or more claims particularly pointing out and distinctly
claiming the subject matter which the applicant regards as his
invention.” A decision as to whether a claim is invalid under this
provision requires a determination whether those skilled in the art
would understand what is claimed. See Shatterproof Glass Corp.
v. Libbey-Owens Ford Co., 758 F.2d 613, 624, 225 USPQ 634, 641
(Fed. Cir. 1985) (Claims must “reasonably apprise those skilled in
the art” as to their scope and be “as precise as the subject matter
permits.”).
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