Appeal No. 1998-2648
Application No. 08/473,888
expressly states that 2,6-diaminopurine (“2,6 DAP”) is an “analog” of adenine
(“A”). See page 4. Thus, the only reasonable interpretation of the claim
language, in light of the specification, is that 2,6 -diaminopurine is not a “synthetic
residue.” Appellants’ amendment of the claim language adds nothing
substantive to the claims and is fully supported by the specification.
2. The indefiniteness rejections.
The examiner rejected all of the claims because they use “consisting
essentially of” language to define a genus of chemical compounds. The
examiner argues that, while “consisting essentially of” language is appropriate for
claims to compositions, it is indefinite when used to define the make-up of the
claimed chemical compounds.
Appellants argue that “consisting essentially of” language has been held to
be proper with respect to both composition claims and method claims, and that it
is equally applicable to the instantly claimed compounds. In addition, Appellants
note that the specification (page 57) expressly states that at least 5 out of 7
bases in the claimed oligos must be so-called “motif” bases in order for them to
retain their triplex-forming property.
Although we understand the examiner’s general concern that “consisting
essentially of” language can be problematic when applied to chemical
compounds, we conclude that the present claims are not indefinite. The claimed
oligos are polymers made up of several different subunits, some of which are
nucleotide bases or base analogs. Nucleotide bases can be either pyrimidines or
purines, which can be present in any proportion in an otherwise undefined
5
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 Next
Last modified: November 3, 2007