Appeal No. 1997-2510
Application No. 07/868,539
The examiner’s statement of the rejection is somewhat confusing.
Initially, the examiner finds the term “corresponds” unclear in the phrase “whose
sequence corresponds to a sequence of DNA recognized by a viral specific
transcription factor.” Then, in further developing the statement of the rejection,
the examiner appears to be confused about appellant’s use of the term “region”
arguing that “there are no multiple fragments.”
We agree with appellant (Brief, page 26) “that one of skill in the art would
have no difficulty in interpreting … [the claims] in light of the specification.” With
regard to the examiner’s argument that “there are no multiple fragments”, we
agree. There are no multiple fragments. Instead, the claims comprise a DNA
fragment. This DNA fragment has two regions that are joined by “a
tetranucleotide sequence” of defined structure in claim 1; or a “covalent link” in
claim 6. In our opinion, when the claims are read as a whole, a person of
ordinary skill in the art would not find the claims vague or indefinite.
With regard to the term “comprising”, appellants direct (Brief, page 25)
“the [e]xaminer’s attention to the table in Figure 4, which shows exemplary
sequences recognized by transcription factors from a number of viruses.” The
examiner misconstrues appellant’s (Answer, page 25) reference to the table in
Figure 4, as an attempt by appellant to read the limitations of the figure into the
claim. We recognize as set forth in Comark Communications, Inc. v. Harris
Corp., 156 F.3d 1182, 1186, 48 USPQ2d 1001, 1005 (Fed. Cir. 1998):
[T]hat there is sometimes a fine line between reading a claim in
light of the specification, and reading a limitation into the claim from
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