Appeal No. 2005-0258 Page 4
Application No. 09/768,877
We agree. In re Gardner, 427 F.2d 786, 788, 166 USPQ 138, 140 (CCPA 1970)
(“[b]readth is not indefiniteness.”). In our opinion, a person of ordinary skill in the
art reading appellants’ claimed invention in light of their specification would
understand that the claims are open to include a method of screening for a
modulator of the function of any “calpain 10” of any structure 3 from any organism.
Accordingly, we reverse the rejection of claims 18-21, 49-51, 53-64, 115 and 116
under 35 U.S.C. § 112, second paragraph.
New Matter:
Claims 19, 49 and 53 stand rejected under 35 U.S.C. § 112, first
paragraph.4 According to the examiner (Answer, page 6), “[t]his is a new matter
rejection.” In this regard, the examiner finds (Answer, bridging paragraph, pages
6-7), claims 19, 49 and 53
encompass a method of screening for a modulator of calpain 10
function wherein the calpain 10 polypeptide used comprises amino
acids 1-47 of SEO ID NO: 2. While the specification discloses a
method as described above wherein the calpain 10 polypeptide
used is that of SEQ ID NO: 2, the Examiner has been unable to
locate adequate support in the specification for a method of
screening for a modulator of calpain 10 function with a calpain 10
polypeptide which comprises specifically amino acids 1-47 of SEQ
ID NO: 2. Furthermore, the Examiner has not been able to find a
specific reference to amino acids 1-47 of SEQ ID NO: 2. Thus
there is no indication that methods using specifically calpain 10
polypeptides which comprise amino acids 1-47 of SEQ ID NO: 2
3 We note, however, that claims 19, 49, 50, and 53 limit the structure of the calpain 10
polypeptide by requiring that “the calpain 10 polypeptide comprises amino acid 1 to 47 of SEQ ID
NO:2.” In addition, we note that claims 115 and 116 limit the source of the calpain 10 polypeptide
to a human calpain 10.
4 As we understand the examiner’s rejection, claim 49 was included in the rejection because it
depends from claim 19. We note, however, that claim 50, depends from claim 49. Accordingly, it
is unclear why claim 50 was not also included in this rejection.
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007