Appeal No. 1996-3348
Application No. 08/139195
amendment in such a way as to justify an assertion that it is
directed to a different invention than was the original claim, it is
proper to inquire whether the newly claimed subject matter
was described in the patent application when filed as the
invention of the applicant. . . . The question arises in a variety
of situations some of which are catalogued in In re Smith, 481
F.2d 910, 914, 178 USPQ 620, 624 (CCPA 1973). As our
predecessor court said in that case:
The specification as originally filed must convey
clearly to those skilled in the art the information that the
applicant has invented the specific subject matter later
claimed. In re Ruschig, supra, 54 CCPA [1551]at
1559, 379 F.2d [990]at 996, 154 USPQ [118]at 123.
When the original specification accomplishes that,
regardless of how it accomplishes it, the essential goal
of the description requirement is realized.
In deciding the issue, the specification as a whole must be
considered.
The specification discloses the invention as “genetic probes.” See, e.g.,
Specification, page 4. We note that no size or other physical constraint is placed on these
probes as described in the “Disclosure of the Invention.” See, Specification, page 3. We
recognize that appellant recites probe size and hybridization conditions in both the “Modes
of Carrying Out the Invention” and “Example 2.” See, Specification, pages 9, 10 and 11.
Admittedly, the specification does not contain language that corresponds identically to the
language of the claims on appeal. However, the disclosure describes probes for human
membrane cofactor protein effective to detect the DNA sequence in Sequence Listing I.D.
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