Appeal No. 95-3606
Application 07/827,691
specification, limits the scope of the claimed invention to
reliable methods for ascertaining whether an individual is a
carrier for, or afflicted with Fragile X. However, we hold
that the language, “for determining whether an individual
carries a mutation for Fragile X” in Claim 42, considered in
conjunction with “a PCR reaction mixture which is
substantially free of added GTP or dGTP” and in light of the
specification, does not limit the scope of the subject matter
claimed to kits comprising materials useful in reliable
methods for determining whether an individual carries a
mutation for Fragile X. In support of our holding that
appellants’ Claim 41 is limited to reliable methods for
ascertaining whether an individual is a carrier for, or
afflicted with, Fragile X and that appellants’ Claim 42 is not
limited to kits for use in performing reliable methods for
determining whether an individual carries a mutation for
Fragile X, we find in the specification teaching that the
method of Claim 41 has substantial and practical utility while
the kit of Claim 42 may or may not. See Cross v. Iizuka, 753
F.2d 1040, 1044, 224 USPQ 739, 742 (Fed. Cir. 1985):
It is axiomatic that an invention cannot be
considered
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