Appeal No. 2004-1967 Page 7
Application No. 09/027,439
of 40 bases in length.” Brief, page 5. This interpretation is entirely consistent with the
specification, which teaches that probes “between about 10 and about 40 nucleotides”
in length are appropriate for detection of species-specific or genus-specific nucleotides
by hybridization, while “probes having complementary regions of 15 to 25 nucleotides
are most preferable.” Specification, page 16. In addition, while we agree with the
examiner that “the use of the term ‘comprising’ [in claim 55] . . . encompasses
sequences on either side of the defined sequence” (Answer, page 6), we do not agree
that it makes the claim indefinite. As explained in the specification, probes “may include
additional residues, such as additional 5' or 3' nucleotides . . . so long as the sequence
meets the [required] criteria” (Specification, page 13), in this case, targeting the
appropriate species of Shigella. In addition, “[i]ndicator molecules . . . may be attached
to nucleic acid molecules . . . at the 3' end, the 5' end, or at other locations on the
molecule” (id., page 14).
The examiner also criticizes the term “said molecule” in claims 55 and 56 as
lacking sufficient antecedent basis. However, we are persuaded that one skilled in the
art would understand that “said molecule” refers to the “fragment . . . of [ ] nucleotide
sequence SEQ ID NO: 3,” 4, 5 or 6.
The rejection of claims 55-58 under the second paragraph of 35 U.S.C. § 112, is
reversed.
II. Statutory Subject Matter under 35 U.S.C. § 101
According to the examiner, claims 55-58 “do not sufficiently distinguish over
nucleic acids as they exist naturally because the claims do not particularly point out any
non-naturally occurring differences between the claimed products and the naturally
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