Appeal No. 1995-2785
Application No. 07/576,423
The rejection of claims 17 through 19, 21 through 23, 26,
and 30 under 35 U.S.C. § 112, first paragraph, as based on a
specification which does not adequately teach how to make or
how to use the claimed invention is reversed.
Claims 17 through 19, 26, and 30 stand rejected under
35 U.S.C. § 112, second paragraph, as indefinite. Again, in
view of its brevity, we reproduce the entire statement of
rejection from the Examiner's Answer (Paper No. 24), page 4,
lines 8 through 15:
Claims 17-19, 26 and 30 are rejected under
35 U.S.C. § 112, second paragraph, as being
indefinite for failing to particularly point out and
distinctly claim the subject matter which applicant
regards as the invention. Applicants inclusion of
the language "under conditions that include 6x SSC
at 42E C" fails to adequately specify hybridization
conditions, as such are incomplete; the stringency
of hybridization is dependent upon numerous other
factors, such as the amount of formamide and/or
other chemicals present. Therefore it is not clear
from the claims what the hybridization conditions
are, and therefore what the metes and bounds of the
claims are.
The examiner expresses concern that appellants' claim
language "fails to adequately specify hybridization
conditions" and that "it is not clear from the claims what the
hybridization conditions are." However, as stated in Ex parte
Jackson,
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