Appeal No. 95-3606
Application 07/827,691
the rejections under 35 U.S.C. §§ 103 and 112, we must first
decide . . . [what] the claims include within their scope.”)
For example, we have compared the prior art teaching to
the claimed subject matter by interpreting the steps of Claim
41, i.e.:
c) detecting the presence and size of said amplified
nucleic acid by comparison with known standards, and
using
techniques known in the art; and
d) determining whether said individual is a carrier
for, or afflicted with Fragile X[;]
and the composition of the Claim 42 kit in a manner consistent
with reliably “ascertaining whether an individual is a carrier
for, or afflicted with Fragile X” (Claim 41) and the named
parts of the kit of Claim 42. Our conclusions as to the
patentability of appellants’ claimed methods and kits under 35
U.S.C. § 103, and under 35 U.S.C. § 102 as the epitome of
obviousness, are limited thereby. However, the steps of Claim
41 appear to this panel to be so unclear and indefinite and
overly broad that the examiner may wish to and correctly
should reconsider the patentability of all claimed methods
under the second and then first paragraphs of 35 U.S.C. § 112.
- 29 -
Page: Previous 20 21 22 23 24 25 26 27 28 29 30 31 32 33 34 Next
Last modified: November 3, 2007