Appeal No. 2004-2356 Page 13
Application No. 09/833,740
Claims 1-5 and 9-11 stand rejected under 35 U.S.C. § 112, second
paragraph, for failing to particularly point out and distinctly claim the subject
matter that applicant regards as the invention.
We initially note that the examiner has not separated the analysis under
35 U.S.C. § 112, first paragraph, lack of adequate written description, and 35
U.S.C. § 112, second paragraph, indefiniteness. The following, however,
appears to be the best statement as to why the examiner finds the claims to be
indefinite.
[The] specification and claims do not clearly set forth the
metes and bounds of “promoter region of a GLP-2 receptor gene”
because it [sic, they] does not indicate what level of similarity in
structure and tissue expression between the putative promoter
sequence and the endogenous promoter are required for the
putative promoter to be considered a “promoter region of a GLP-2
receptor gene.” It is unclear, especially from the teachings in para.
0156, whether the 1.5 kb mouse GLP-2R DNA fragment is a
“promoter region of a GLP-2R receptor gene” since it did not
“correctly specify transcription in all cells and tissues expressing the
endogenous GLP-2R receptor.” It is unclear how dissimilar a
putative promoter sequence can be to an endogenous GLP-2R
promoter in terms of both structure and function, and still be a
“promoter region of a GLP-2R receptor gene” required by the
claims. Consequently, the claims do not meet the requirements of
§ 112, 2nd para.
Examiner’s Answer, page 5.
“The test for definiteness is whether one skilled in the art would
understand the bounds of the claim when read in light of the specification.” Miles
Laboratories, Inc. v. Shandon, Inc., 997 F.2d 870, 875, 27 USPQ2d 1123, 1126
(Fed. Cir. 1993). The examiner’s concerns, however, appear to be more
concerns under 35 U.S.C. § 112, first paragraph, written description, rather than
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