Appeal No. 1997-4145
Application No. 08/361,328
(FIG. 2A). The DNA stream was allowed to air dry and was then fixed to
the slide by flooding the slide with a 75% methanol/25% acetic acid
fixative. The DNA was fixed to the slide for 1-5 minutes, the excess
fixative drained, and the slide air-dried. Slides were used immediately or
stored in slide boxes under N2 with drierite, at -20oC until used for
hybridization.
OPINION
I. Rejection of claims 33-40 under § 112, first paragraph
The DNAs of claims 33-40 are "stretched" to various kilobase pair lengths, i.e.,
"between about 0.50 :m and about 60 :m" (claim 33), "between about 0.55 :m and
about 0.65 :m" (claim 34), "between about 0.40 :m and 0.65 :m" (claim 35), "between
about 0.60 :m and about 0.70 :m" (claim 36), "between about 0.40 :m and 0.45 :m"
(claim 37), "between about 0.45 :m and about 0.60 :m" (claim 38), "about 0.47 :m"
(claim 39) and "about 0.1 :m" (claim 40). Appellant admits that these "exact numbers
are not recited in the specification," but argues that there is inherent support for
kilobase pair stretch lengths between 0.34 :m and 0.65 :m (brief, p. 9). Appellant also
disagrees with the examiner that some of these stretch lengths "are unreasonably large
or small" (brief, p. 9; answer, pp. 3 and 7). (Compare the 0.34 :m theoretical unfolded
length of a kilobase pair of helical DNA with the upper stretch length limit of 60 :m
recited in claim 33 and the stretch length of about 0.1 :m recited in claim 40.)
According to appellant, "the written description is submitted to satisfy the enablement
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