Appeal No. 2003-1105 Page 3
Application No. 09/738,461
III. Claims 1-9 stand rejected under 35 U.S.C. § 112, first paragraph, as
the specification that fails to adequately describe the claimed invention.
For the reasons that follow, we vacate2 rejections I-III, and remand the
administrative file to the examiner for further consideration.
DISCUSSION
I. The issues regarding the “ionically labeled probe”:
According to the examiner (Answer, page 4), “it is unclear in the second
‘directing’ step of claim 1 how ‘attachment to’ … a complementary DNA segment
would cause release of a labeled ion – one of ordinary skill in the art would
expect no such release from mere hybridization of the ionically labeled probe to
its target.” As we understand the Answer, the examiner has the same concern
with regard to claim 6, which is written in Jepson format. Id.
In our opinion, however, the examiner’s concern goes to whether
appellants’ specification provides an enabling description of the claimed
invention under 35 U.S.C. § 112, first paragraph, not whether the claims are
indefinite under 35 U.S.C. § 112, second paragraph. As our appellate reviewing
court explains in Amgen Inc. v. Chugai Pharmaceutical Co., Ltd., 927 F.2d 1200,
1217, 18 USPQ2d 1016, 1030 (Fed. Cir. 1991), the second paragraph of 35
2 Lest there be any misunderstanding, the term “vacate” in this context means to set aside or to
void. When the Board vacates an examiner’s rejection, the rejection is set aside and no longer
exists. Therefore the issues set forth herein cannot be satisfied by a Supplemental Examiner’s
Answer. See Ex parte Zambrano, 58 USPQ2d 1312, 1313 (Bd. Pat. App. & Int. 2000).
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