2100 Patentability

2164.01(c) In re Vaeck citation

The MPEP here states:

 

When a compound or composition claim is limited by a particular use, enablement of that claim should be evaluated based on that limitation.

See In re Vaeck, 947 F.2d 488, 495, 20 USPQ2d 1438, 1444 (Fed. Cir. 1991) (claiming a chimeric gene capable of being expressed in any

cyanobacterium and thus defining the claimed gene by its use).

 

Quite respectfully, is it 'defining the claimed gene by its use' as it states in the MPEP or is it rather: 'defining the claimed gene by its capability' ? The recitation of 'use' here gives the idea that 'cable of being expressed...' is a 'use' while 'capable of being expressed' is a limitation; i.e., this statement is providing a specific characteristic of the gene and not simply a 'use' for the gene.

 

A 'use' could be claimed as: '...a chimeric gene for expressing in any cyanobacterium...' or '...a chimeric gene used for expressing in any cyanobacterium.'

 

It might be helpful to examiners, if it is deemed pertinent and applicable, to amend this to state "When a compound or composition claim is limited by a particular use or a particular capability, enablement of that claim should be evaluated based on that limitation....(claiming a chimeric gene capable of being expressed in any cyanobacterium and thus defining the claimed gene by its capability')

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Idea No. 159