Appeal No. 1998-2648
Application No. 08/473,888
nucleic acid. With respect to the instantly claimed oligos, however, the
proportion of pyrimidines (or pyrimidine analogs) and purines (or purine analogs)
can change the essential properties of the oligos, i.e., their ability to form a triplex
with a specific nucleotide sequence.
The specification expressly states that the proportion of “non-motif” bases
at a proportion greater than 2 out of 7 will interfere with this essential property.
See page 57 (“According to the present invention, the frequency of determinative
bases and/or base analogs plus synthetic residues is no less than five out of
seven.”). Thus, reading the language of, e.g., claim 1 in light of the specification,
it is clear that “consisting essentially of pyrimidine bases and/or base analogs
thereof,” means that at least 5 out of every 7 bases in the claimed oligo is a
pyrimidine, pyrimidine analog, or synthetic residue. We conclude, therefore, that
the use of “consisting essentially of” in the instant claims does not render them
indefinite.
The examiner also rejected claims 4 and 5 as allegedly indefinite because
2,6-diaminopurine is expressly excluded (“at least one synthetic residue (not 2,6-
diaminopurine)”) and is also recited as a possible “base analog.”
As we noted above with respect to the rejection for inadequate written
description, the only reasonable interpretation of the claims, in light of the
specification, is that 2,6 -diaminopurine is a “base analog” and not a “synthetic
residue.” The language of claims 4 and 5 simply makes this distinction
expressly, and the claims are therefore not indefinite.
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