Appeal No. 1999-1367
Application 08/453,998
element because there is no criterion presented in the specification nor in the claim
that defines any line of demarcation of variant and not variant.
The examiner also rejects the claim for failing to describe variants in a manner
which excludes natural elements, asserts that all of the variants have the same function as
the natural element which is defined by function. The examiner also argues that claim 27 is
ambiguous regarding the orientation of repeated elements to each other and to any other
elements in the construct. In addition, the examiner argues that “in a test of inducible
expression of $-galactosidase” does not state the point of delineation of inducible
expression nor how the test makes a variant different from a natural response element.
We disagree. First, it is not necessary for all members of a Markush group to be
mutually exclusive; the mere fact that a compound may be embraced by more than one
member of a Markush group recited in the claim does not necessarily render the scope of
the claim unclear. Ex parte Kristensen,10 USPQ 2d 1701 (Bd. Pat. App & Int. 1989). In
regard to confusing variants with natural elements, logic dictates that a variant must vary
from a natural element, and therefore the term “variants” does exclude the natural element.
We do not agree that the natural ligand responsive elements responsive to steroids,
retinoids, thyroid hormones, or vitamin D3 all have the same function, since each type of
responsive element binds to a different receptor protein. The language of claim 25 states
that the variants used in the claim must “retain the function of a natural ligand responsive
element activating sequence” in a particular test format, “inducible expression of $-
6
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