Appeal No. 2005-0258 Page 5
Application No. 09/768,877
II. Appellants’ statement of the claim groupings:
Regarding the second ground of rejection, the new matter rejection,
appellants assert (Brief, bridging paragraph, pages 6-7), “[c]laims 19 and 53 do
not stand or fall with the other claims relative to the written description rejection
under 35 U.S.C. [§] 112, first paragraph, based on the phrase ‘amino acids 1-47
of SEQ ID NO: 2’ because only claims 19 and 53 recite the phrase ‘amino acids
1-47 of SEQ ID NO: 2.’” Accordingly, as we understand it, this statement relates
to the new matter rejection of claims 19, 49 and 53, and does not relate to the
third ground of rejection. In support of this conclusion, we note appellants’
recognition of this rejection as a separate issue on appeal (Brief, pages 4 and 5),
and appellants’ separate reference to claims 19 and 53 in their discussion of the
claim grouping for the third ground of rejection (Brief, page 7).
Appellants make two assertions (Brief, page 7, emphasis added), with
regard to the third ground of rejection:
1. Claims 18-21, 49-51 and 53-64 do not stand or fall with the other
claims relative to the written description rejection under 35
U.S.C. [§] 112, first paragraph, based on the phrase “calpain 10”
because only claims 18-21, 49-51 and 53-64 recite the phrase
“calpain 10.”
2. Additionally, claims 19 and 53, stand or fall separately from
claims 18, 20, 21, 49, 51, 54-55, and 57-60 in regard to this
rejection because, even though all of the claims are have [sic]
written description in the specification, claims 19 and 53 have
additional amino acid sequence recitations upon which
additional arguments for the patentability of the claims may be
based.
The Decision recognized appellants’ statement that claims 19 and 53 were
grouped separately from claims 18, 20, 21, 49, 51, 54-55, and 57-60. See
Page: Previous 1 2 3 4 5 6 7 8 9 Next
Last modified: November 3, 2007