Appeal 2007-1624
Application 10/424,662
amendment to claim 78 (Answer 3-4). The Examiner asserts: “While
hybridization conditions are well know and varied in the art, ‘appropriate
conditions’ for a novel array may vary from other arrays known in the art.
The specification does not teach or describe the conditions that would be
‘appropriate’ for the claimed array. Therefore, the recitation introduces new
matter into the specification” (Answer 4).
We disagree.
“The descriptive text needed to meet [the written description
requirement] . . . varies with the nature and scope of the invention at issue,
and with the scientific and technologic knowledge already in existence.”
Capon v. Eshhar, 418 F.3d 1349, 1357, 76 USPQ2d 1078, 1084 (Fed. Cir.
2005). In this case, the Specification discloses conditions which affect
hybridization (Spec. 42: 28-31). Persons of skill in the art would have been
familiar with the “appropriate” conditions necessary to accomplish
hybridization. Thus, it is unnecessary to describe the specific hybridization
conditions used with the claimed oligonucleotide array. The Examiner has
provided no evidence that these conditions would be different for the
claimed array of particles. Accordingly, we conclude that the Specification
describes that “the oligonucleotides hybridize . . . under appropriate
conditions” as recited in claim 78.
For the reasons discussed above, we reverse the rejection of claims
77-86, 88, 89, and 105-108 as failing to comply with the written description
requirement.
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