Appeal No. 1997-4145
Application No. 08/361,328
suggest that a DNA molecule in solution forms a certain kind of supercoil
of its own accord. [Abstract]
According to the examiner,
[t]he observation that straight thin filaments were produced is
discussed on page 514, second full paragraph which reads on the
extended or super-extended DNA production of claim 1. ... The instant
DNA obtaining step is clearly set forth on page 502 under "Experimental
Procedures", part (b). The proteinase K digestion in said part (b) reads on
the enzymatic degradation limitation of instant claim 4. The phenol
extraction in said part (b) reads on instant claim 10 in that phenol is well
known in the art as being a protein denaturant. [Answer, p. 4.]
"To anticipate a claim, a reference must disclose every element of the
challenged claim and enable one skilled in the art to make the anticipating subject
matter." PPG Indus., Inc. v. Guardian Indus. Corp., 75 F.3d 1558, 1566, 37 USPQ2d
1618, 1624 (Fed. Cir. 1996). Claims 1, 2, 4, 5 and 10 all require a process which
produces "a DNA extended to an interkilobase pair distance that exceeds 0.34 :m."
The examiner's apparent position is that since Matsumoto discloses stretching a DNA
filament to its maximum length and beyond such that it is broken, such a length and,
therefore, the claimed method, is clearly disclosed (answer, p. 8).
However, characterizing a filament as thin and straight does not necessarily
mean that the filament has an interkilobase pair distance that exceeds 0.34 :m.
Further, the claimed process produces an ultimate DNA which is not broken, i.e., a
super-extended DNA (see e.g., specification, para. bridging pp. 6-7). Moreover,
Matsumoto discloses that "DNA appears to be significantly broken during the isolation
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