Appeal No. 1997-2510
Application No. 07/868,539
the specification. See, e.g., 1 Donald S. Chisum, Chisum on
Patents Section 3.02 [1] & n.12 (rel. Dec. 1996) ("The line
between interpreting claim language in light of the specification and
reading a limitation from the specification into the claim is a fine
one.").
However, in our opinion, by reference to Figure 4, appellant is merely providing
exemplary sequences that “correspond to a sequence of DNA recognized by a
viral-specific transcription factor” (see Specification, page 7, description of Figure
4). Therefore, in our opinion, when the claims are read in light of the
specification, a person of ordinary skill in the art would reasonably understand
what is intended by the phrase “corresponds to a sequence of DNA recognized
by a viral-specific transcription factor”.
Claim 7:
According to the examiner (Answer, bridging paragraph, pages 4-5):
In claim 7 … the “one region” (second to last line) is
indefinite as to the end where X1 is covalently attached is the
3’ end of X1 … attached to the … 3’ end of the “one region”
(is it the first region or the second region that is referred to
as the ‘one region’? Similarly, the [sic] it is not clear as to
whether the “and X4 is covalently attached refers to the 5’
end of X4; attached to the 5’ end of the “other region”. Is it
the first region or the second region that is referred to as the
“other region”?
In response, appellant argues (Brief, page 26) that “[t]he claim refers to
two regions of DNA which are joined by a linker in the 5’ to 3’ direction. It does
not matter which of the two regions is first … and which is second.” Appellant
further argues (id.) “one of skill in the art could make the determination that the
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