Appeal No. 1996-3348
Application No. 08/139195
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specification. Claim 13, as originally filed, was drawn to “[a] DNA probe which contains a
portion of the DNA sequence shown in Figure 1
effective to detect the presence of human MCP-encoding DNA.” The examiner states that
hybridization conditions now present in the claim 13 were not originally disclosed as
“directed to the hybridization of any generic DNA probe that hybridizes to SEQ ID NO:1.”
See, Answer, page 3. The examiner finds no disclosure that demonstrates that the phrase
“effective to detect” corresponds with “the specific hybridization conditions now in
[amended] claim 13 that is directed to generic probe usage.” See, Answer, page 3.
Appellant argues, for a variety of reasons, that the disclosure as originally filed
reasonably conveys to those of skill in the art that appellant had possession of DNA
probes as now claimed. See, Brief, pages 4-7. We agree.
As set forth in, In re Wright, 866 F.2d 422, 424, 9 USPQ2d 1649, 1651 (Fed. Cir.
1989) (alteration in original):
When the scope of a claim has been changed by
2We note the Preliminary Amendment filed October 20, 1993 (Paper No. 4), page 2,
added the phrase “[a]s described in Molecular Cloning. A Laboratory Manual, Sambrook,
et al., (Cold Spring Harbor Laboratory Press, 1989), sequences of at least seventeen
consecutive nucleotides of” before the words “The cDNA” on page 9, line 32 of the
specification. The examiner did not mention this amendment to the specification in his
analysis, nor did the examiner object to this amendment under 35 U.S.C. § 132.
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