Appeal No. 2001-1432 Page 4
Application No. 08/469,416
functional characteristic . . . were coupled with a disclosed correlation between that
function and a structure that is sufficiently known or disclosed.” See Enzo Biochem Inc.
v. Gen-Probe Inc., 296 F.3d 1316, 1324-25, 63 USPQ2d 1609, 1613 (Fed. Cir. 2002).
Claim 93, however, is directed to nucleic acid probes, defined solely by their
ability to recognize a single base difference within an unspecified restriction site of an
unspecified oncogene or its corresponding proto-oncogene. In other words, the
claimed genus is defined in purely functional terms, without reference to a disclosed
structure. This functional description, without more, does not satisfy the standard
articulated in Enzo, and we conclude that the claimed genus is not adequately
described as required under the first paragraph of 35 U.S.C. § 112.
CONCLUSION
We have reversed the rejection of the claims under the doctrine of obviousness-
type double patenting, and entered a new ground of rejection against claim 93 under
the provisions of 37 CFR § 1.196 (b). As a result of action today, claims 99 and 100
are free of rejection.
TIME PERIOD FOR RESPONSE
This opinion contains a new ground of rejection pursuant to 37 CFR § 1.196 (b)
(amended effective Dec. 1, 1997, by final rule notice, 62 Fed. Reg. 53,131, 53,197 (Oct.
10, 1997) 1203 Off. Gaz. Pat. & Trademark Office 63, 122 (Oct. 21, 1997)). 37 CFR §
1.196 (b) provides that, “A new ground of rejection shall not be considered final for
purposes of judicial review.”
37 CFR § 1.196 (b) also provides that the appellant, WITHIN TWO MONTHS
FROM THE DATE OF THE DECISION, must exercise one of the following two options
with respect to the new ground of rejection to avoid termination of proceedings (37 CFR
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