Appeal No. 1997-4272
Application No. 08/429,053
the examiner has pointed out, the antigen solution that is defined by the first four
steps of the recited process would contain only partially purified SPS enzyme,
not monoclonal hybridomas. To produce hybridomas would require additional
steps including immunizing an animal with the antigen solution, recovering
splenocytes from the immunized animal, and fusing the splenocytes with
myeloma cells. See, e.g., the process disclosed in the specification on pages 9-
18. Therefore, we affirm the rejection of claim 23 under 35 U.S.C. § 112, second
paragraph.
Appellants seem to argue that claim 23 is simply directed to the same
hybridomas claimed in claim 11. We decline to adopt this interpretation. To
interpret the claims in such a way would make superfluous all of the process
language of claim 23; under Appellants’ interpretation, claim 23 would say
nothing more than “the monoclonal hybridomas of claim 11.” Not only would this
interpretation vitiate most of the limitations of claim 23, it would also violate the
statutory requirement that a dependent claim further limit the claim from which it
depends. See 35 U.S.C. § 112, fourth paragraph.
Because we cannot determine the scope of claim 23, we have no way to
determine whether the claimed hybridomas would have been rendered obvious
by the prior art. See In re Steele, 305 F.2d 859, 862, 134 USPQ 292, 295
(CCPA 1962) (when claims are indefinite, rejecting under § 103 based on
amendment did not overcome the second source of indefiniteness. See the Supplemental
Examiner’s Answer, page 2.
4
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 Next
Last modified: November 3, 2007