Appeal No. 2001-0407 Page 16
Application No. 08/460,215
distinguishes the claimed composition from any other composition comprising a
PKD1 gene and a pharmaceutically acceptable carrier. The preamble thus
appears to recite merely an intended use of the claimed composition. Since it
adds no limitations to those recited in the body of the claim, it is irrelevant to the
claim construction.
As Appellants have pointed out, in applications related to the present one,
claims directed to PKD1-encoding DNA have been allowed and have issued.
See, e.g., claim 1 of U.S. Patent 6,071,717: “An isolated gene encoding human
PKD1 polypeptide.” (The ‘717 patent issued based on a continuation-in-part of
application 08/381,520, while the instant application is a divisional of the same
‘520 application.)
In fact, claim 19 of the ‘717 patent is directed to “[a] composition
comprising an isolated human PKD1 gene having the DNA sequence of SEQ ID
NO:2 and a carrier or diluent.” It appears, therefore, that the USPTO has already
determined that those of skill in the art would have been able to make and use a
composition comprising a carrier DNA encoding PKD1, without undue
experimentation. The examiner has provided no basis for concluding otherwise
in this case. Therefore, the rejection of claims 45-47 under 35 U.S.C. § 112, first
paragraph, is reversed.
Other Issues
Claim 19 of U.S. Patent 6,071,717 is directed to “[a] composition
comprising an isolated human PKD1 gene having the DNA sequence of SEQ ID
NO:2 and a carrier or diluent.” By comparison, instant claim 45 is directed to “a
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