Appeal No. 2005-0412 Page 5
Application No. 09/682,968
a molecule that inhibits the expression of an enzyme as an effector. Since claim
3 depends from claim 1, it necessarily follows that the breadth of the term
“effector” as it appears in claim 1 must also include inhibitors of DP IV
expression.
Therefore, we find the term “effector” as set forth in claim 1 to be
indefinite. Accordingly, we affirm the rejection of claim 1 under 35 U.S.C. § 112,
second paragraph. As set forth above, claims 2, 4 and 5 fall together with claim
1.
THE OBVIOUSNESS-TYPE DOUBLE PATENTING REJECTION:
According to the examiner (Answer, page 7), “[c]laims 1-5 are rejected
under the judicially created doctrine of [obviousness-type] double patenting over
claims 1-4 of U.S. Patent No. 6,319,893….” Appellants did not dispute the merits
of this rejection. Instead, appellants state (Brief, page 7), “upon notification of
allowable subject matter, [appellants] will execute an acceptable terminal
disclaimer to overcome this rejection.”
Accordingly, we summarily affirm the rejection under the judicially created
doctrine of obviousness-type double patenting.
THE REJECTION UNDER 35 U.S.C. § 112, FIRST PARAGRAPH:
Having disposed of all claims on appeal, we do not reach the merits of the
rejection under 35 U.S.C. § 112, first paragraph.
3 According to appellant (Brief, page 6), “[b]y italicization of ‘effector,’ … [Darnell] defines
‘effector’ as a definite term in the art. The term effector means a molecule that binds to enzymes
and either increases or decreases the[ir] enzymatic activity.”
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