Appeal No. 2003-1105 Page 7
Application No. 09/738,461
complementary DNA. See supra. In this regard, we note the examiner’s
response to appellants’ arguments (Answer, page 6), “page 5, lines 11-16 of the
specification … support the rejection; that is, it is recited that ‘…the polymerase
enzyme will release a labeled ion 18…’, and the whole point of the rejection is
that there is no limitation regarding any polymerase enzyme in claim 1.”
Curiously, however, the examiner included claim 4 in this rejection. Claim 4
further limits the method of claim 1 by requiring that “the labeled ion is release by
polymerase enzyme reaction.” We remind the examiner that a claim is not
necessarily indefinite simply because its scope is broad. Accordingly, we vacate
the rejection of claims 1-9 under 35 U.S.C. § 112, second paragraph, as it
relates to the issue of the lack of amplification steps.
Having vacated the rejections under 35 U.S.C. § 112, first and second
paragraphs, we are compelled to remand the application to the examiner. Upon
receipt of the administrative file, we encourage the examiner to take a step back
and construe the claimed invention as a person of ordinary skill in the art, using
appellants’ specification as a guide. After, having the opportunity to properly
construe the claimed invention the examiner will be in a better position to
determine whether appellants’ specification enables the full scope of appellants’
claimed invention.
If, after review of the administrative record, together with the relevant prior
art, the examiner believes that a rejection should be made, we encourage the
examiner to clearly articulate the statutory basis for any such rejection and to
provide a fact-based reasoned analysis supporting the basis of the rejection.
Page: Previous 1 2 3 4 5 6 7 8 9 Next
Last modified: November 3, 2007