Appeal No. 2001-1263 Page 11
Application No. 08/475,955
paragraph 2. The examiner has not explained why one of ordinary skill in the art would
have any difficulty in determining the metes and bounds of claims 7 through 11. Absent
such an explanation from the examiner, we do not find that claims 7-11 are indefinite.
Rejection IV
Finally, we reverse the examiner’s rejection of claims 1, 2, 5, and 7 through 11
under 35 U.S.C. § 112, second paragraph.
As explained at page 7 of the Examiner’s Answer, the examiner is concerned
that:
Amended claim 1 is unclear. If Appellant wants to claim a peptide up to 40
amino acids wherein said peptide comprises the disclosed SEQ ID No.s, the
claim should be read as “A linear peptide epitope for a human autoantibody
consisting of less than forty amino acids, wherein said peptide epitope comprises
an amino acid sequence capable of binding to an autoantibody and is selected
from the group consisting of …”.
Again, the examiner has not explained why one of ordinary skill in the art would have
any difficulty ascertaining the metes and bounds of the claims on appeal. As set forth
above, claim 1 as directed to linear epitopes for a human autoantibody. The epitope
must first be a peptide of less than 40 amino acids. Second, the peptide must comprise
an amino acid sequence capable of binding to an autoantibody consisting of the listed
La/SSB epitopes. We find nothing inconsistent or confusing with the use of the term
“comprising” in claim 1. Again, the claimed peptide first must be less than 40 amino
acids and consist of one of the sequences set forth in the SEQ ID Nos. specified in the
claim. Apart from those two requirements, the peptide may “comprise” other amino
acids as long as the resulting peptides possess the required binding property.
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