Appeal No. 1997-4272
Application No. 08/429,053
New Ground of Rejection
Under the provisions of 37 CFR § 1.196(b), we make the following new
ground of rejection: claim 24 is rejected under 35 U.S.C. § 112, second
paragraph, as indefinite. As discussed above, claim 24 is open to two
interpretations, both of which appear plausible in light of the specification and
prosecution history. Since we cannot determine the metes and bounds of the
claim, we conclude that claim 24 is indefinite. See Miles Laboratories Inc. v.
Shandon Inc., 997 F.2d 870, 875, 27 USPQ2d 1123, 1126 (Fed. Cir. 1993) (“The
test for definiteness is whether one skilled in the art would understand the
bounds of the claim when read in light of the specification.”). See also In re
Morris, 127 F.3d 1048, 1054, 44 USPQ2d 1023, 1029 (Fed. Cir. 1997) (“It is the
applicants’ burden to precisely define the invention, not the PTO’s. See
35 U.S.C. § 112, ¶ 2. . . . [T]his section puts the burden of precise claim drafting
squarely on the applicant.”).
Other Issues
As noted above, claim 24 may properly be construed to read on a
monoclonal antibody directed against any SPS enzyme. If so, claim 24 would
read on the spinach SPS-specific monoclonal antibodies disclosed by Walker.
See page 520, right-hand column (“Three stable independent hybridoma clones
. . . were isolated which produce antibodies directed against spinach leaf sucrose
phosphate synthase.”). The examiner should consider whether Walker
anticipates claim 24.
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