Appeal No. 2003-1105 Page 4
Application No. 09/738,461
U.S.C. § 112 requires only that:
“[t]he specification shall conclude with one or more claims
particularly pointing out and distinctly claiming the subject matter
which the applicant regards as his invention.” A decision as to
whether a claim is invalid under this provision requires a
determination whether those skilled in the art would understand
what is claimed. See Shatterproof Glass Corp. v. Libbey-Owens
Ford Co., 758 F.2d 613, 624, 225 USPQ 634, 641 (Fed. Cir. 1985).
Here the examiner appears to understand what is claimed in the “second
‘directing’ step” -- a labeled probe attaches to a complementary DNA segment
causing the release of a labeled ion. Thus, the examiner’s concern does not
appear to be whether the claimed invention is indefinite in the context of 35
U.S.C. § 112, second paragraph. Instead, it appears to be whether the
specification provides an enabling description of the claimed invention as
required by 35 U.S.C. § 112, first paragraph. Stated differently, does the
specification provide an enabling description of ionically labeled probes that
would release a labeled ion when attached to a complementary DNA segment
according to the claimed invention?
Since, in our opinion, the rejection is not based upon the correct legal
standards, we vacate the rejection of claims 1-6 under 35 U.S.C. § 112, second
paragraph, as indefinite with regard to the issue of the ionically labeled probe.
This, however, does not end our discussion regarding the “ionically labeled
probe.”
According to the examiner (Answer page 5), “the specification does not
describe a single example of an ‘ionically labeled probe’, nor how digestion of
such a probe by a polymerase … will result in release of ionic label such that
Page: Previous 1 2 3 4 5 6 7 8 9 Next
Last modified: November 3, 2007