Appeal No. 1998-2648
Application No. 08/473,888
Discussion
1. The written description rejection.
Claims 2-5 specify that the “synthetic residue” in the claimed
oligonucleotides is not 2,6 -diaminopurine. The examiner rejected these claims,
and dependent claims 11-14, as unsupported by an adequate written description
because, in his view, the specification provides no basis for excluding 2,6-
diaminopurine from the “synthetic residues” that can be incorporated into the
claimed oligos.
Appellants argue that, when the claims are read in light of the
specification, it is clear that 2,6-diaminopurine is a “base analog” and not a
“synthetic residue” at all. Thus, they argue, the language added to the claims
merely clarifies that 2,6-diaminopurine is not a synthetic residue. In support of
their position, Appellants point to Table 2 of the specification.
We agree with Appellants that the claims are adequately supported by the
specification. During examination, claims are given their broadest reasonable
interpretation, in light of the specification. See In re Sneed, 710 F.2d 1544, 1548,
218 USPQ 385, 388 (Fed. Cir. 1983) (“It is axiomatic that, in proceedings before
the PTO, claims in an application are to be given their broadest reasonable
interpretation consistent with the specification.”). The specification and claims
draw a distinction between “synthetic residues” and “base analogs.” For
example, claim 1 recites an “oligonucleotide containing . . . nucleotide bases and
at least one synthetic residue . . . said nucleotide bases consisting essentially of
pyrimidine bases and/or base analogs thereof.” Table 2 of the specification
4
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