Appeal No. 1997-2510
Application No. 07/868,539
We note the examiner’s reference to In re Zletz, 893 F.2d 319,
13 USPQ2d 1320 (Fed. Cir. 1989). According to the examiner (Answer, page 5)
Zletz stands for the proposition that “there is no reason to read into the claim(s)
limitations of the specification….” We agree with the examiner (id.) that 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.”
Zletz, 893 F.2d at 321-22, 13 USPQ2d at 1322. We note that claim language
must be analyzed “not in a vacuum, but always in light of the teachings of the
prior art and of the particular application disclosure as it would be interpreted by
one possessing the ordinary skill in the pertinent art.” In re Moore, 439 F.2d
1232, 1235, 169 USPQ 236, 238 (CCPA 1971).
Claims 1 and 6:
According to the examiner (Answer, page 4) “claims 1 and 6 are unclear
as to what is meant to be included or excluded by recitation of ‘whose sequence
corresponds to a sequence of DNA recognized by a viral specific transcription
factor’….” The examiner reasons (id.):
The DNA is one single strand of DNA even where it is argued that
the DNA in claim 1 is indicated as joined by traditional 5’ to 3’
phosphodiester bonds. Joining results in a single piece of DNA ….
Thus, the claim is indefinite as there are no multiple fragments, but
only one fragment and the metes and bounds of the first and
second regions coincide and include the X1 to X4 [region].”
13
Page: Previous 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 Next
Last modified: November 3, 2007