Appeal No. 1999-1367
Application 08/453,998
the receptor protein is the human estrogen receptor “hER”; an example of the responsive
element is the chicken vitellogenin estrogen responsive element “ERE”. See, generally,
specification pages 7 and 8, and example 1 on pages 10-14.
Definiteness
We begin with the proposition that “the definiteness of the language employed [in a
claim] must be analyzed--not in a vacuum, but always in light of the teachings of the prior
art and of the particular application disclosure as it would be interpreted by one
possessing the ordinary level of skill in the pertinent art.” In re Moore, 439 F.2d 1232,
1235, 169 USPQ 236, 238 (CCPA 1971)(footnote omitted).
The Examiner’s answer states that the metes and bounds are indeterminable for
that portion of the claimed subject matter directed to "a variant of a natural ligand
responsive element activating sequence which is a palindromic sequence or a repetition
of a palindromic sequence and which retains the function of a natural ligand responsive
element activating sequence in a test of inducible expression of $-galactosidase.” The
examiner states (Examiner’s Answer, Page 5 (Paper No. 44)) :
The application does not disclose any nor do the claims indicate what are or are not
the criteria for determining/defining what is or is not a variant of a natural ligand
responsive element activating sequence which retains the function of a natural
ligand responsive element activating sequence in a test of inducible expression of
B-galactosidase (note that the E. coli IacZ DNA would fulfill the requirement as a
variation of the original ERE sequence). There is no indication of what bases, which
bases in the sequence, nor how many bases are or are not in a variant and which of
the functions is the function that is retained...In fact, the instant claim reads on any
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