Appeal No.2001-2506 Page 5
Application No. 08/415,658
processes requiring the use of that plasmid are also novel and nonobvious. See
In re Ochiai, 71 F.3d 1565, 1569-70, 37 USPQ2d 1127, 1131 (Fed. Cir. 1995).
It may be argued in support of the examiner’s rejection that the limitation
of a “microorganism transformed with the plasmid pSM651 CBS 203.94” should
be read as a product-by-process limitation. If a product of a product-by-process
limitation “is the same or obvious from a product of the prior art, the claim is
unpatentable even though the prior product was made by a different process.” In
re Thorpe, 777 F.2d 695, 697, 227 USPQ 964, 996 (Fed. Cir. 1985). However,
as discussed above, the product, in this case the microorganism transformed
with the pSM651 plasmid, is different and nonobvious over the microorganisms
of the prior art, as the transformed microorganism now contains a plasmid whose
DNA sequence is not taught or suggested by the prior art.
Admittedly, during ex parte prosecution, claims are to be given their
broadest reasonable interpretation consistent with the description of the
invention in the specification. See In re Zletz, 893 F.2d 319, 321, 13 USPQ2d
1320, 1322 (Fed. Cir. 1989). But giving the claims their broadest interpretation
does not include reading a limitation required by the claims that are the subject
of this appeal, i.e., the pSM651 plasmid, out of the claims. See Unique
Concepts, Inc. V. Brown, 939 F.2d 1558, 1562, 19 USPQ2d 1500, 1504 (Fed.
Cir. 1991) (“All the limitations of a claim must be considered
meaningful . . . .”). If appellants did not want to be limited to the use of the
pSM651 plasmid, the plasmid could have been more broadly claimed.
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