Appeal No. 2005-0258 Page 3
Application No. 09/768,877
GROUNDS OF REJECTION
I. Claims 18-21, 49-51, 53-64, 115 and 116 stand rejected under
35 U.S.C. § 112, second paragraph, as being indefinite in the
recitation of the term “calpain 10.”
II. Claims 19, 49 and 53 stand rejected under 35 U.S.C. § 112, first
paragraph, as the specification fails to adequately describe the
claimed invention.
III. Claims 18-21, 49-51, 53-64, 115 and 116 stand rejected under
35 U.S.C. § 112, first paragraph, as the specification fails to
adequately describe the claimed invention.
IV. Claims 18-21, 49-51, 53-64, 115 and 116 stand rejected under
35 U.S.C. § 112, first paragraph, as based on an insufficient
disclosure to support or enable the scope of the claimed
invention.
We reverse rejections I and II. We affirm rejection III. Having affirmed the
rejection of all claims under the written description provision of 35 U.S.C.
§ 112, first paragraph, we do not reach the merits of rejection IV.
DISCUSSION
Definiteness:
Claims 18-21, 49-51, 53-64, 115 and 116 stand rejected under 35 U.S.C.
§ 112, second paragraph. As we understand the examiner’s rejection, the scope
of the claimed invention is open to include a method of screening for a modulator
of the function of any “calpain 10” of any structure from any organism and
therefore “one of skill in the art cannot [be] reasonably apprised of the scope of
the invention.” Answer, page 6. In response appellants assert (Brief, page 12),
“[t]he breadth of a claim should not be equated with indefiniteness.”
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