Appeal No. 2000-0137 Page 10
Application No.08/646,558
groups. To classify these amino acids as hydrophobic defies the art-accepted
definition of “hydrophobic amino acid.”
Thus, while it is clear that Appellants are not using the art-accepted
definition of “hydrophobic,” it is unclear what definition of “hydrophobic” they are
using. It is also unclear what criteria should be used to determine whether other
amino acids are hydrophobic. Nor is it clear which amino acids could possibly be
considered not hydrophobic, if Appellants’ definition of “hydrophobic” amino acids
includes those with polar side chains, like Tyr and Cys, as well as those with
positively charged (Lys) and negatively charged (Asp) side chains.
Since Appellants are obviously applying a definition of “hydrophobic” that
differs from the art-accepted definition, and yet the specification provides no
guidance on what their definition of “hydrophobic” is, we find it impossible to
determine how the instant claims would be read, in light of the specification, by a
person of ordinary skill in the art. Therefore, the claims are indefinite and do not
meet the requirements of 35 U.S.C. § 112, second paragraph.
Claims 35, 37-39, 41, 53-55, and 57-61 are not subject to the above new
ground of rejection. These claims are directed to peptides (or related
compositions or processes) which are defined either by reference to specific
SEQ ID NO’s or by reciting each of the amino acid residues potentially present in
the Xaa1, Xaa2 and Xaa3 positions. The metes and bounds of these claims
therefore are readily ascertainable. Although some of these claims were
included in the rejections on appeal, we nonetheless find it appropriate to vacate
the rejections. The examiner’s proffered bases for the rejections are directed to
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