Appeal No. 2001-0121 Page 8
Application No. 08/212,185
paragraph) point out (Brief, page 15), “as already indicated … the mutated
promoters employed by Decker et al. are not small molecules.”
The examiner, however, finds (Answer, page 15), the term “small
molecules” is a relative term of which there is no definition in the specification.
Accordingly, the examiner argues (Answer, bridging sentence pages 15-16), “in
the absence of any express definition, or any single generally accepted definition
in the art, … [Decker’s] promoter fragments are within the broadest reasonable
interpretation of the term ‘small molecules’ [emphasis added].”
In our opinion, the inconsistent treatment of the term “small molecule” with
regard to the rejections under 35 U.S.C. § 112, second paragraph, and § 102(a)
has introduced substantial confusion into this record with regard to the scope of
the claim. In this regard, we remind the examiner that analyzing claims based on
“speculation as to meaning of the terms employed and assumptions as to the
scope of such claims” is legal error. In re Steele, 305 F.2d 859, 862, 134 USPQ
292, 295 (CCPA 1962).
Accordingly, we vacate2 the rejection of claim 100 under 35 U.S.C.
§ 102(a), and remand the application to the examiner for further consideration.
2 Lest there be any misunderstanding, the term “vacate” in this context means to set aside or to
void. When the Board vacates an examiner’s rejection, the rejection is set aside and no longer
exists. Cf. Ex parte Zambrano, 58 USPQ2d 1312, 1313 (Bd. Pat. App. & Int. 2001).
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 Next
Last modified: November 3, 2007