Ex parte Beachy

Board of Patent Appeals and Interferences

Dec 31, 1997

07789738 (B.P.A.I. Dec. 31, 1997)

Application for patent filed November 8, 1991.1
1
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was not written for publication in a law journal and (2) is not
binding precedent of the Board.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. 26
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte ROGER N. BEACHY and
MAITRAYEE BHATTACHARYYA
__________
Appeal No. 94-4377
Application 07/789,7381
__________
ON BRIEF
__________
Before GRON, ELLIS and OWENS Administrative Patent Judges.
ELLIS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1
through 24, which are all the claims pending in the application.
Claim 1 is illustrative of the subject matter on appeal and
reads as follows:
1. An isolated genome-length transcript promoter from rice
tungro bacilliform virus.
Appeal No. 94-4377
Application 07/789,738

This is the only rejection presented in the examiner’s2
Answer and, accordingly, it is the only issue which we will
address. We direct the appellants’ attention to 37 CFR
§ 1.191(a) which states that appeals may be made to this Board
for any claims which have been twice rejected or which have been
given a final rejection (§1.113). The issue, raised in the
appellants’ Brief, of the propriety of the introduction of the
full citation of a scientific journal publication into the
specification because in the examiner’s view, it constitutes the
addition of new matter under 35 U.S.C. § 132, does not include
the rejection of any of the pending claims.
2
Claims 1 through 24 stand rejected under 35 U.S.C. § 112,
second paragraph, as being indefinite for failing to particularly
point out and distinctly claim the subject matter which the
appellants regard as the invention.2
Having given careful consideration to the entire record
which includes, inter alia, the appellants’ Brief (Paper No. 23)
and the examiner’s Answer (Paper No. 24), we find ourselves in
substantial agreement with the appellants’ position.
Accordingly, we reverse the rejection.
It is well established that claims in an application are to
be given their broadest reasonable interpretation consistent with
the specification, and that the claim language should be read in
light of the specification as it would be interpreted by one of
ordinary skill in the art. In re Sneed, 710 F.2d 1544, 1548, 218
USPQ 385, 388 (Fed. Cir. 1983); In re Moore, 439 F.2d 1232, 1235,
Appeal No. 94-4377
Application 07/789,738

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169 USPQ 236, 238 (CCPA 1971) (“Definiteness of the language
employed must be analyzed- not in a vacuum, but always in light
of the teachings of the prior art and of the particular
application disclosure as it would be interpreted by one
possessing the ordinary level of skill in the pertinent art”).
The examiner argues that the claims are vague and indefinite
in the recitation of “genome-length.” Answer, sentence bridging
pp. 2-3. According to the examiner, the referenced phrase does
not clearly set forth the boundaries of the promoter. Id., p. 3.
We find this position untenable primarily for two reasons.
First, we find that the examiner has improperly taken the
phrase “genome length” out of context. As pointed out by the
appellants, the referenced phrase is used to modify the term
“transcript.” Brief, pp. 12-13. In fact, the complete phrase as
it appears in the claim is “genome length transcript promoter.”
The examiner has not provided any reasons on this record as to
why the phrase, in its entirety, would not have been understood
by those having ordinary skill in the art. In re Moore, supra.
More importantly, as pointed out by the appellants, the
contested phrase is defined on p. 5 of the specification. Brief,
p. 11. It is not clear to us why the examiner has ignored these
Appeal No. 94-4377
Application 07/789,738

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teachings. As noted by the court in In re Moore, 439 F.2d at
1235, footnote 2, 169 USPQ at 238, footnote 2,
[i]t is important here to understand that under this
analysis claims which on first reading - in a vacuum, if you
will - appear indefinite may upon a reading of the
specification disclosure or prior art teachings become quite
definite.
Here, we know of no reason, and none has been provided by
the examiner, as to why one of ordinary skill in the art, upon
reading the appellants’ specification, would have found the
claimed subject matter indefinite. Accordingly, the rejection is
reversed.
The decision of the examiner is reversed.
REVERSED
)
TEDDY S. GRON )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JOAN ELLIS )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
TERRY J. OWENS )
Administrative Patent Judge )
Appeal No. 94-4377
Application 07/789,738

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