Appeal No.2001-2506 Page 6
Application No. 08/415,658
REJECTION UNDER 37 C.F.R. § 1.196(b)
Claims 2 and 3 are rejected under 35 U.S.C. § 112, fourth paragraph, as
they fail to further limit the process of claim 1.
The process of claim 1 is drawn to a process of producing D-I-amino
acids, “wherein the conversion reaction is carried out in the presence of a
microorganism transformed with the plasmid pSM651 CBS 203.94.” Claims 2
and 3, however, require that the conversion reaction be carried out “in the
presence of the enzymatic system isolated from the microorganism transformed
with the plasmid pSM651 CBS 203.94.” Claim 2. Claim 3 is dependent on claim
2.
The fourth paragraph of section 112 requires that:
a claim in dependent form shall contain a reference to a claim
previously set forth and then specify a further limitation of the
subject matter claimed. A claim in dependent form shall be
construed to incorporate by reference all the limitations of the claim
to which it refers.
Claims 2 and 3 fail to further limit claim 1 because claim 1 requires that the
conversion reaction be carried out in the presence of a microorganism
transformed with the plasmid pSM651 CBS 203.9, whereas claim 2 and 3 do not
contain that limitation, as they require that the conversion reaction take place in
the presence of an enzyme system isolated from a microorganism transformed
with the plasmid pSM651 CBS 203.9. Because claims 2 and 3 do not
incorporate all of the limitations from the claim upon which they depend, they do
not meet the requirements of 35 U.S.C. § 112, fourth paragraph.
OTHER MATTERS
Upon receipt of the application, the examiner should investigate whether
the Bureau Voor Schimmelcultures, SK Baarn (Holland) is an acceptable
Page: Previous 1 2 3 4 5 6 7 8 9 Next
Last modified: November 3, 2007