Appeal No. 2004-1967 Page 6
Application No. 09/027,439
DISCUSSION
I. Indefiniteness
“[T]he definiteness of the language employed [in a claim] must be analyzed - -
not in a vacuum, but always in light of the teachings of the prior art and of the particular
application disclosure as it would be interpreted by one possessing the ordinary level of
skill in the pertinent art.” In re Moore, 439 F.2d 1232, 1235, 169 USPQ 236, 238 (CCPA
1971).
Claim 55 is directed to a probe which targets Shigella flexneri, S. sonnei, S.
dysenteriae or S. boydii, “comprising a fragment greater than 10 to 40 bases in length of
a nucleotide sequence SEQ ID NO:3,” SEQ ID NO:4, SEQ ID NO:5 or SEQ ID NO:6,
respectively. Claim 56 is directed to similar subject matter, except that the probe
“consist[s] of a fragment greater than 10 to 40 bases in length of a nucleotide sequence
SEQ ID NO: 3,” SEQ ID NO: 4, SEQ ID NO: 5 or SEQ ID NO: 6. According to the
examiner, claims 55-58 are indefinite because the recitation “greater than 10 to 40
bases in length” “can be interpreted a number of different ways.” Answer, page 6. For
example “[t]he claim can be interpreted to encompass greater than ‘10 to 40’ bases . . .
[thus] 50 nucleic acid[s] would be greater than ‘10 to 40’ but 15 would not be greater
than ‘10 to 40’ because 15 nucleic acid[s] would be within the range of 10-40, not
greater than the range. The claim could also be interpreted to encompass any number
of lower length limitations . . . [but] no upper length limitations.” Id.
Nevertheless, we agree with appellants that the only reasonable interpretation of
the phrase “greater than 10 to 40 bases in length” is that it “define[s] a range having a
lower limit of greater than 10 bases in length, i.e. 11 bases in length, and an upper limit
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