Ex parte Bashkin et al.

Board of Patent Appeals and Interferences

Sep 27, 1999

07947071 (B.P.A.I. Sep. 27, 1999)

Application for patent filed September 16, 1992. 1
According to appellants, this application is a continuation of
Application No. 07/550,001, filed June 14, 1990, now
abandoned.
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THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the Board.
Paper No. 34
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte JAMES K. BASHKIN, MICHAEL K. STERN
and ANIL S. MODAK
________________
Appeal No. 1995-1304
Application No. 07/947,0711
________________
ON BRIEF
________________
Before WINTERS, WILLIAM F. SMITH and LORIN, Administrative
Patent Judges.
WINTERS, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 1995-1304
Application No. 07/947,071
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This appeal was taken from the examiner's decision
rejecting claims 1, 3 through 8, 10 through 16, 20 through 23,
and 25 through 30. Claims 31 through 33, which are the only
other claims remaining in the application, stand allowed.
REPRESENTATIVE CLAIM
Claim 1, which is illustrative of the subject matter on
appeal, reads as follows:
1. The method of hydrolytically cleaving RNA under
physiologically relevant conditions with a compound selected
from the group consisting of nucleosides, nucleotides and
oligodeoxy-nucleotides having attached thereto a metal complex
effective for RNA hydrolysis.
THE REJECTIONS
In rejecting the appealed claims on non-prior art
grounds, the examiner does not rely on any references.
The claims stand rejected as follows: (1) claims 1, 3
through 8, 10 through 16, 20 through 23, and 25 through 30
under 35 U.S.C. § 112, first paragraph, "as being based on an
insufficient disclosure to support the scope of the claimed
subject matter"; and (2) claims 1, 3 through 8, 10 through 16,
20 through 23, and 25 through 30 under 35 U.S.C. § 112, first
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Application No. 07/947,071
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and second paragraphs, "as the claimed invention is not
described in such full, clear, concise and exact terms as to
enable any person skilled in the art to make and use the same,
and/or for failing to particularly point out and distinctly
claim the subject matter which applicant regards as the
invention." See the Examiner's Answer, pages 3 and 9.
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Application No. 07/947,071
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DISCUSSION
The examiner argues that appellants' specification is
insufficient to support the scope of claims 1, 3 through 8, 10
through 16, 20 through 23, and 25 through 30. According to
the examiner, the specification does not provide adequate
guidance enabling any person skilled in the art to make
compounds which hydrolytically cleave RNA except for the
compounds enumerated in allowed claims 31 through 33. We
disagree.
As stated in In re Armbruster, 512 F.2d 676, 677-78,
185 USPQ 152, 153 (CCPA 1975) quoting from In re Marzocchi,
439 F.2d 220, 223-24, 169 USPQ 367, 369-70 (CCPA 1971):
As a matter of Patent Office practice, then, a
specification disclosure which contains a teaching
of the manner and process of making and using the
invention in terms which correspond in scope to
those used in describing and defining the subject
matter sought to be patented must be taken as in
compliance with the enabling requirement of the
first paragraph of § 112 unless there is reason to
doubt the objective truth of the statements
contained therein which must be relied on for
enabling support. . . .
. . . [I]t is incumbent upon the Patent Office,
whenever a rejection on this basis is made, to
explain why it doubts the truth or accuracy of any
statement in a supporting disclosure and to back up
assertions of its own with acceptable evidence or
Appeal No. 1995-1304
Application No. 07/947,071
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reasoning which is inconsistent with the contested
statement.
Having carefully reviewed the Answer (Paper No. 26), we find
that the examiner has not provided adequate reasons or
evidence which
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Application No. 07/947,071
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would cast doubt on the objective truth of statements
contained in the specification and relied on for enabling
support. We believe that appellants' specification (including
EXAMPLES I through XV) imparts ample information to persons
skilled in the art, enabling them to make and use the full
scope of the claimed subject matter.
Referring to page 13, TABLE 1 of the specification, the
examiner argues that "some compounds work, some do not"; and,
for this reason, the specification is inadequate to support
the full scope of the appealed claims. See the Examiner's
Answer, page 4. However, as stated in a similar context in
Atlas Powder Co. v. E.I. Du Pont De Nemours and Co., 750 F.2d
1569, 1576-77, 224 USPQ 409, 414 (Fed. Cir. 1984):
Even if some of the claimed combinations were
inoperative, the claims are not necessarily invalid.
"It is not a function of the claims to specifically
exclude . . . possible inoperative substances. . .
." Of course, if the number of inoperative
combinations becomes significant, and in effect
forces one of ordinary skill in the art to
experiment unduly in order to practice the claimed
invention, the claims might indeed be invalid. . . .
That, however, has not been shown to be the case
here. [Citations omitted.]
On this record, the examiner has not established that the
number of inoperative compounds encompassed by the claims is
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Application No. 07/947,071
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significant or "in effect forces one of ordinary skill in the
art to experiment unduly in order to practice the claimed
invention."
The rejection of claims 1, 3 through 8, 10 through 16, 20
through 23, and 25 through 30 under 35 U.S.C. § 112, first
paragraph, "as being based on an insufficient disclosure to
support the scope of the claimed subject matter" is reversed.
Claims 1, 3 through 8, 10 through 16, 20 through 23, and
25 through 30 also stand rejected under 35 U.S.C. § 112, first
and second paragraphs, "as the claimed invention is not
described in such full, clear, concise and exact terms as to
enable any person skilled in the art to make and use the same,
and/or for failing to particularly point out and distinctly
claim the subject matter which applicant regards as the
invention." See the Examiner's Answer, page 9. According to
the examiner, these claims are indefinite and based on a non-
enabling disclosure in view of the recitation "physiologically
relevant conditions."
The rejection is manifestly untenable with respect to
claims 8, 10 through 16, and 20 through 22, because these
claims do not recite "physiologically relevant conditions."
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Application No. 07/947,071
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Claims 1, 3 through 7, 23, and 25 through 30 stand on
different footing. It would appear, on the surface, that the
claim language "physiologically relevant conditions" refers to
7.1 pH and 37EC. This follows from reading the claims in
light of the specification, page 10, lines 22 and 23. There,
the specification describes "physiologically relevant
conditions (7.1 pH and 37EC)." Looking under the surface,
however, we note appellants' statement in the Appeal Brief,
page 3, lines 4 and 5, that dependent claim 30 limits the
"physiologically relevant conditions" to pH and temperature.
This means to say that claims 1, 3 through 7, 23, and 25
through 30 are not limited to 7.1 pH and 37EC. In other
words, the case before us presents an ambiguity. Reading the
claims in light of the specification suggests that the
expression "physiologically relevant conditions" is limited to
7.1 pH and 37EC; whereas reading the claims in light of each
other suggests that the expression "physiologically relevant
conditions" is not so limited. On these facts, we agree with
the examiner that claims 1, 3 through 7, 23, and 25 through 30
are unclear and indefinite.
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Application No. 07/947,071
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The situation is aggravated because claim 30, which
depends from claim 1, requires that the physiologically
relevant conditions be "selected from pH and temperature." It
is unclear from this usage whether appellants mean pH or
temperature in the alternative, or a combination of both pH
and temperature (for example, 7.1 pH and 37EC).
In the Appeal Brief, pages 4 and 5, appellants state
that:
The phrase "in physiologically relevant
conditions" refers to physical conditions which are
known or can be readily determined by an ordinarily
skilled artisan. Although these conditions may not
exclude a method involving physiological activity,
the relevant physiological conditions are themselves
readily available to or can be determined by an
ordinary artisan. A reference to exemplify such
conditions is made of record in the prosecution
giving a specific enabling source for the scope of
the claims. Other such sources are available for
enabling this invention. In other words, the
conditions are not variable, and the only
variability is from one set of conditions to another
and the source of information regarding such
conditions. Even for undocumented conditions there
is no variability of the conditions from time to
time and each new set of conditions can be readily
determined.
. . . [T]he "physiologically relevant conditions"
are not vague in that these conditions are the same
and definite for a given subset. That is, as noted
by [the] Examiner, differences are relevant from a
plant, to a spider, to a cyanobacterium, or to a
human but within each of these there are no such
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differences as shown by the reference exemplifying
such conditions noted above. Here definiteness is
evident for a given physiological set of conditions.
For those conditions not readily found in
references, an ordinarily skilled artisan can make a
definite determination of the actual conditions of
various physiologies with virtually no
experimentation given the technology available today
to measure temperature and pH.
We have carefully reviewed and reflected on the above-quoted
statement, but are at a loss to understand just what
appellants mean by the expression "physiologically relevant
conditions."
The rejection of claims 1, 3 through 7, 23, and 25
through 30 under 35 U.S.C. § 112, second paragraph, as
indefinite in view of the expression "physiologically relevant
conditions" is affirmed. We shall not pass on the rejection
of claims 1, 3 through 7, 23, and 25 through 30 under
35 U.S.C. § 112, first paragraph, as based on a non-enabling
disclosure in view of the expression "physiologically relevant
conditions." Where, as here, the scope of the claims is
unclear, we cannot engage in a meaningful analysis under
35 U.S.C. § 112, first paragraph. Cf. In re Moore, 439 F.2d
1232, 1235, 169 USPQ 236, 238 (CCPA 1971) (Claims must be
analyzed first to determine exactly what subject matter they
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encompass before considering the written description
requirement of 35 U.S.C. § 112, first paragraph.)
CONCLUSION
In conclusion, the rejection of claims 1, 3 through 8, 10
through 16, 20 through 23, and 25 through 30 under 35 U.S.C.
§ 112, first paragraph, "as being based on an insufficient
disclosure to support the scope of the claimed subject matter"
is reversed.
The rejection of the appealed claims as indefinite and
based on a non-enabling disclosure in view of the recitation
"physiologically relevant conditions" is reversed with respect
to claims 8, 10 through 16, and 20 through 22.
The rejection of claims 1, 3 through 7, 23, and 25
through 30 under 35 U.S.C. § 112, second paragraph, as
indefinite in view of the expression "physiologically relevant
conditions" is affirmed. We do not reach the rejection of
claims 1, 3 through 7, 23, and 25 through 30 under 35 U.S.C.
§ 112, first paragraph, as based on a non-enabling disclosure
in view of the expression "physiologically relevant
conditions."
Appeal No. 1995-1304
Application No. 07/947,071
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The examiner's decision is affirmed-in-part.
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Application No. 07/947,071
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No time period for taking any subsequent action in
connection with this appeal may be extended under
37 CFR § 1.136(a).
AFFIRMED-IN-PART
SHERMAN D. WINTERS )
Administrative Patent Judge )
)
)
)
)
WILLIAM F. SMITH ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
)
HUBERT C. LORIN )
Administrative Patent Judge )
SDW:clm
Appeal No. 1995-1304
Application No. 07/947,071
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Donald R. Holland
Howell & Hafer Kamp, L.C.
7733 Forsyth Blvd., Ste. 1400
St. Louis, MO 63105