Appeal No. 1999-1289
Application No. 08/334,085
Appellants’ request is premised on the assertion that the Board overlooked or
misapprehended certain teachings in the specification in finding the claims indefinite
under the second paragraph of 35 U.S.C. § 112. We are not persuaded that the claims
satisfy the requirements of the second paragraph of 35 U.S.C. § 112, but appellants’
request is granted to the extent that our previous decision is modified to reflect a different
basis for the rejection. As a consequence of this modification, we denominate this
decision as a new decision under 37 CFR § 1.197(b).
As set forth in appellants’ request, “[t]he rejection was made on the grounds that the
language of claim 1, step c is not clear,” in particular, the phrase “other sample
processing.” Claim 1 reads as follows:
1. A method for the detection of target DNA-containing cells or microorganisms in
a sample, said method comprising
a) culturing said cells or microorganisms in order to increase the number of cells or
microorganisms in the sample,
b) removing the cultured cells or microorganisms from culture,
c) performing enzymatic amplification of a target DNA sequence of the cultured
cells or microorganisms to produce amplification products by direct polymerase chain
reaction, wherein said direct polymerase chain reaction is performed without prior DNA
extraction, cell lysis or other sample processing, and
d) detecting the amplification products as an indication of the presence of target
DNA-containing cells or microorganisms.
In our previous decision, we stated that, “based on the specification, ‘other sample
processing’ does not appear to encompass everything that could be considered
2
Page: Previous 1 2 3 4 5 6 Next
Last modified: November 3, 2007