Appeal 2007-1627
Application 09/870,009
the “other than said gene portion” recited in claim 5 does not include the
protein coding sequence or transcription control information that the
Specification defines as characteristics of a gene portion. The rejection of
claim 32 under 35 U.S.C. § 112, first paragraph, is reversed.
3. INDEFINITENESS
Claims 8-10 stand rejected under 35 U.S.C. § 112, second paragraph,
as indefinite, because “the phrase ‘intentionally designed’ . . . is vague and
indefinite. It is unclear what limitation of a nucleic acid or structure is
intended by the recitation that it be ‘intentionally designed.’” (Answer 6.)
We agree with the Examiner that claims 8-10 are indefinite because it
is unclear how the phrase “intentionally designed” limits the scope of the
claims. Claim 8 recites a “special sequence that is not naturally occurring
. . . and is intentionally designed.” The Specification states that a “special
sequence . . . is intentionally designed” (page 7) but does not disclose any
structural features that distinguish an intentionally designed special sequence
from other sequences of DNA.
“A claim is indefinite if its legal scope is not clear enough that a
person of ordinary skill in the art could determine whether a particular
composition infringes or not.” Geneva Pharms. v. GlaxoSmithKline, 349
F.3d 1373, 1384 (Fed. Cir. 2003). Here, Appellants have not described the
structural feature(s) that distinguish DNA that includes an intentionally
designed sequence from other DNA. The scope of the claims is therefore
ambiguous, and “ambiguity in claim scope is at the heart of the definiteness
requirement of 35 U.S.C. § 112, ¶ 2.” Amgen, Inc. v. Hoechst Marion
Roussel, 314 F.3d 1313, 1342 (Fed. Cir. 2003).
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