Appeal No. 1996-2211
Application No. 08/018,546
transporting said bovine embryos in a transportation medium” The specification provides no definition for
the terms “transporting” or “transportation medium.”
We recognize that appellants and the examiner have engaged in a debate on the record involving
these terms. Specifically, page 6 of the Examiner’s Answer addresses this issue:
Appellants indicate that the specification teaches that the results obtained
using the claimed method were performed with a duration of
transportation time of 18.3 hours. However, it should be noted that the
claims do not reflect a duration of transportation time. Thus the breadth
of appellants argument is not commensurate in scope with that of
appellants claims.
Appellants’ respond to this, in the bridging paragraph of pages 2-3 of their Reply Brief, by stating:
Clearly, the fact that embryo survival is benefited on lengthier trips is an
advantage of the claimed method and supports the patentability of the
claims rather than detracts therefrom. One designs a transportation
medium to survive maximum expected stresses, not minimum stresses.
In response, the examiner states at page 3 of the Supplemental Examiner’s Answer:
[T]he claims do not indicate criticality to the fact that such
transportation is to assure survival as opposed to development.
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