Appeal No. 2004-2319 Page 11
Application No. 09/915,694
enable those skilled in the art to make and use the mRNA that represents the
remainder of the invention defined by part (b).
Finally, even assuming that part (b) of claim 12 were construed to
encompass naturally occurring mRNAs that are at least 95% identical to SEQ ID
NO:2, and assuming that the specification provides an enabling disclosure for
such mRNAs, the scope of the claims would still be unclear. The specification
provides no guidance that would allow those skilled in the art to determine, with a
reasonable degree of confidence, whether any of the sequences that are at least
95% identical to SEQ ID NO:2 occur naturally and, if so, which they would be.
The only way to definitely fix the scope of the claims would be to compare SEQ
ID NO:2 to all naturally occurring sequences, clearly an impossible task. Thus,
even if we were to ignore the various ambiguities discussed above, the metes
and bounds of the claim are unclear.
As the Federal Circuit recently noted,
[t]he Supreme Court explained the reason underlying the
indefiniteness doctrine 60 years ago in United Carbon Co. v. Binney
& Smith Co., 317 U.S. 228, 236, 55 USPQ 381, 385 (1942):
A zone of uncertainty which enterprise and
experimentation may enter only at the risk of infringement
claims would discourage invention only a little less than
unequivocal foreclosure of the field. Moreover, the claims
must be reasonably clear-cut to enable courts to determine
whether novelty and invention are genuine.
Exxon Research and Eng’g Co. v. United States, 265 F.3d 1371, 1376, 60
USPQ2d 1272, 1276 (Fed. Cir. 2001). The court held that compliance with 35
U.S.C. § 112, second paragraph, is determined by “whether ‘the claims at issue
[are] sufficiently precise to permit a potential competitor to determine whether or
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