Appeal No. 2006-1569 Page 4
Application No. 10/159,997
2. Definiteness
The examiner rejected claims 1-4 under 35 U.S.C. § 112, second paragraph, as
indefinite. The examiner reasoned that “[i]t is unclear whether ‘the dataset’ in line 16 [of
claim 1; lines 19-20 as reproduced above] is directed to the mRNA sequence dataset
(lines 3-4 [line 4 above]), or alternate mRNA splice isoform dataset (line 10 [line 12
above]). Claims 2-4 are rejected for being dependent from claim 1.” Examiner’s
Answer, page 7.
Appellants argue that “[t]he objected-to ‘dataset’ of claim 1 must be read in its
context – it is contained in the phrase: ‘the alternate mRNA splice isoform dataset is
restricted to mRNA sequences in which the 5’ end of an EST sequence aligns to a
coding sequence of the corresponding mRNA sequence, such that the reading frame of
the coding sequences can be determined for all isoforms of the dataset.’ In this context,
there is no doubt that ‘the dataset’ refers to the immediately antecedent ‘alternative
mRNA splice isoform dataset.” Appeal Brief, page 5.
We agree with Appellants’ position. The context of the claim makes it reasonably
clear that the phrase “all isoforms of the dataset” refers to the isoforms in the
“alternative mRNA splice isoform dataset.” Claims are in compliance with 35 U.S.C.
§ 112, second paragraph, if “the claims, read in light of the specification, reasonably
apprise those skilled in the art and are as precise as the subject matter permits.”
Hybritech, Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 1385, 231 USPQ 81, 94-
95 (Fed. Cir. 1987). That standard is met here. The rejection for indefiniteness is
reversed.
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