Appeal No. 2001-0624 Page 5
Application No. 08/204052
In addition, we note that the examiner may have misapprehended the
scope of appellants’ claimed invention. To emphasize this point we reproduce
appellants’ claim 109 below, emphasis added:
109. A transgenic mouse having somatic and germ cells containing
a transgene, said transgene encoding and expressing a
neurodegenerative disease-causing mutant SOD-1
polypeptide.
According to the examiner (e.g., Answer, page 5), “the mouse is not claimed to
express the transgene.” If, upon further prosecution, the examiner continues to
interpret the claimed invention in this manner, then the examiner should favor
the record with a clear explanation as to why the word “expressing” is not
considered a limitation in the claimed invention.
We are not authorizing a Supplemental Examiner’s Answer under the
provisions of 37 CFR § 1.193(b)(1). Any further communication from the
examiner which contains a rejection of the claims should provide appellants with
a full and fair opportunity to respond. This application, by virtue of its “special”
status, requires an immediate action. MPEP § 708.01(D) (8th ed., August 2001).
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