Appeal No. 1999-1289
Application No. 08/334,085
processing, but it is not clear which activities are encompassed by the term and which are
not.” For example, we stated that “the term ‘other sample processing’ . . . does not appear
to encompass ‘washing [the cultured cells] by filtration, centrifugation or other conventional
means’.” Appellants correctly point out that, on page 7, lines 8-11 of the specification, “this
particular activity is identified as a removing step,” which corresponds to step b of claim 1,
rather than step c, a point we had overlooked.
It may well be, as appellants maintain, that the specification describes “a two-step
process: the culture step (or biological amplification) and the PCR step (or enzymatic
amplification),” wherein “[t]he removing step directly connects the biological and the
enzymatic amplifications.” Request, page 2. It may also be that the term “direct
polymerase chain reaction,” as used in the specification and claims, even without the
phrase “or other sample processing,” would be understood by one skilled in the art to
preclude “any intervening activity which would affect the sample, or especially the target.”
Id.
Nevertheless, the generic phrase “or other sample processing,” when coupled with
two specific examples of processing, “DNA extraction” and “cell lysis,” gives rise to
confusion over the intended scope of the claim. Compare, e.g. Ex parte Hall, 83 USPQ 38
(Bd. App. 1949) (“material such as rock wool or asbestos”); Ex parte Hasche, 86 USPQ
481 (Bd. App. 1949) (“lighter hydrocarbons, such, for example, as the vapors or gas
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