Appeal No. 2006-2194 Page 5
Application No. 09/866,925
3. Claim 20, for example, does not require predicting regulation of gene
expression, but only appears to require locating possible connectrons.
Last, and most importantly, neither the examiner nor appellant appears to
have engaged in any sort of claim construction, nor have they appeared to have
reached a “meeting of the minds” on how the claims should be interpreted. As
set forth in In re Zletz, 893 F.2d 319, 321-22, 13 USPQ2d 1320, 1322 (Fed. Cir.
1989):
[D]uring patent prosecution when claims can be amended,
ambiguities should be recognized, scope and breadth of language
explored, and clarification imposed. . . . An essential purpose of
patent examination is to fashion claims that are precise, clear,
correct, and unambiguous. Only in this way can uncertainties of
claim scope be removed, as much as possible, during the
administrative process.
Moreover, we remind the examiner and appellant that analyzing claims
based on “speculation as to meaning of the terms employed and assumptions as
to the scope of such claims” is legal error. In re Steele, 305 F.2d 859, 862, 134
USPQ 292, 295 (CCPA 1962).
Thus, upon return of the application, the examiner should engage in the
claim construction analysis, and address any issues that may arise based on that
analysis. For the convenience of the examiner and appellant, we have provided
some examples of such issues, but this should not be seen as an exhaustive of
all such issues that may exist.
Claim 20 appears to be drawn to a method of detecting pairs of non-
adjacent DNA sequences which can bind to two regions of an RNA molecule. As
such, the claim is very broad, and is not limited to identifying “connectrons.”
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