Appeal 2007-1627
Application 09/870,009
wherein said at least one special sequence is embedded in said
DNA.
32. The DNA according to claim 5, wherein said portion which is
other than said gene portion comprises a portion of said DNA which does
not store a protein code sequence and transcription control information for
said sequence.
2. NEW MATTER
Claim 32 stands rejected under 35 U.S.C. § 112, first paragraph, on
the basis that it contains new matter. The Examiner reasons that “[w]hile the
original claim 1 recites ‘portion of said DNA other than a gene’, there is a
lack of written support for the limitation that the ‘other portion’ NOT
include a protein code sequence and transcription control information”
(Answer 5). That is, “[w]hile the specification discloses what . . . the ‘gene
portion’ includes, this disclosure fails to teach what the ‘other’ portion does
NOT include” (id.).
Appellants argue that “the Application defines a gene portion (e.g., in
an exemplary aspect) as a portion where a protein code sequence and its
transcription control information are stored. Thus, one of ordinary skill in
the art would likely assume and it is reasonable to conclude that a portion
other than a gene portion is a portion ‘which does not store a protein code
sequence and transcription control information for said sequence’, as
recited in claim 32” (Appeal Br. 7).
We agree with Appellants that the Specification provides an adequate
basis for the limitation at issue. The Specification states that a gene portion
is (or can be) a region where “a protein code sequence and its transcription
control information are stored” (Specification 13: 4-5). Claim 32 states that
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