Appeal No. 1996-3348
Application No. 08/139195
No. 1 when hybridized under the recited conditions. See, Specification, page 11. After
reading the specification, one skilled in the art would not assume that the invention was
limited to only a particular set of probes as suggested by the examiner. The tenor of the
specification is that a generic invention has been made. See, In re Smith, 481 F.2d 910,
914, 178 USPQ 620, 624 (CCPA 1973). On this record, we agree with appellants that the
disclosure as originally filed reasonable conveys to those of skill in the art that appellant
had possession of DNA probes as now claimed.
Claim 15:
The examiner maintains the position that the specification fails to disclose an upper
limit for the claimed probe of “[n]ewly added claim 15 . . . regarding the limitation ‘at least
seventeen nucleotides in length’.” See, Answer, pages 5 and 14.
As discussed above, the specification discloses the invention as “genetic probes.”
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. The lower limit of the
probe size is defined by the specification to be a 17-mer. See, e.g., Specification, page
10. Therefore, appellant’s specification does describe as the invention probes of “at least
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