Appeal No. 2001-0121 Page 7
Application No. 08/212,185
measured … [and] [a]t page 5149 they disclose adding a series of mutated
promoter fragments (‘small molecules’) to determine the effect on the binding.”
In our opinion, the examiner’s position is inconsistent with her withdrawal
of the rejection of claims 99 and 100 under 35 U.S.C. § 112, second paragraph.
See Answer, page 2. According to the examiner’s Final Rejection (Paper No.28,
page 3),
Claims 99 and 100 remain indefinite because the metes and
bounds of “small molecules” cannot be determined. Applicants
argument that “the skilled artisan would appreciate the metes and
bounds of the term []small molecule” has been fully considered but
is not deemed persuasive. Applicants have failed to point to any
fact or evidence that such has a clearly defined meaning in the art.
The examiner, however, withdrew this rejection; apparently1, in response to
appellants’ reliance (Brief, page 8) on Darnell to demonstrate that “the skilled
artisan would appreciate the metes and bounds of the term ‘small molecule’
which is commonly used in the relevant field of drug design and screening.”
According to appellants (id.), in Darnell:
the term “small soluble molecule” is described as follows…:
A cell’s pool of small soluble molecules- amino acids (aa)
and nucleotides (dNTP and rNTP)- may be separated from
the macromolecules (DNA, RNA, and proteins) by adding
cold acid, usually trichloracetic acid (TCA), which destroys
the cell structure and precipitates all macromolecules….
In responding to the examiner’s rejection of claim 100 under 35 U.S.C.
§ 102(a) over Decker, appellants (relying again on Darnell and their arguments
with regard to the examiner’s rejection under 35 U.S.C. § 112, second
1 The examiner offers no explanation as to why she withdrew the rejection under 35 U.S.C. § 112,
second paragraph.
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