Appeal 2007-4214
Application 10/330,372
to their length they do not meet the limitation of being about or
greater than 95% identical to SEQ ID NO:2.
(Answer 4.)
The Examiner relies on an alignment of SEQ ID NO: 2 with SEQ ID
NOs: 6, 7, 8, 9, 12, and 13 performed at the PTO using the Smith-Waterman
algorithm.
We could not find, however, the above evidence relied upon by the
Examiner in the electronic administrative file. Since such evidence appears
to be critical to the Examiner’s analysis, the application is being remanded to
the Examiner to have the alignment scanned into the electronic application.
We also direct the Examiner’s attention to the following comments.
Basically, the Examiner’s position appears to be that the percentage of
sequence identity may only be calculated by using the total number of
residues in SEQ ID NO: 2 (Answer 7). Using that definition, according to
the Examiner, aligning SEQ ID NO:2 with SEQ ID NO:6 “results in 32
residues being identical divided by the total number of residues in SEQ ID
NO:2 (236 residues) and multiplied by 100% that equals 13.6%.” (Id.)
“The test for definiteness is whether one skilled in the art would
understand the bounds of the claim when read in light of the specification.”
Miles Laboratories, Inc. v. Shandon, Inc., 997 F.2d 870, 875, 27 USPQ2d
1123, 1126 (Fed. Cir. 1993). 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). Moreover, it is
axiomatic that Appellants may act as their own lexicographer. See Merck &
3
Page: Previous 1 2 3 4 5 6 Next
Last modified: September 9, 2013