Appeal No. 1996-3348
Application No. 08/139195
17 nucleotides in length” that are effective to detect the DNA sequence in Sequence
Listing I.D. No. 1 under specific conditions. See, In re Wertheim, 541 F.2d 257, 265, 191
USPQ 90, 99 (CCPA 1976) (“[A]ppellants’ specification does describe as their invention
processes in which particle size is ‘at least 0.25 mm,’ without upper limit”). 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 of at least seventeen
nucleotides in length as now claimed.
Accordingly, the rejections of the claims under 35 U.S.C. § 112, first paragraph, are
reversed.
The rejection under 35 U.S.C. § 112, second paragraph:
At pages 6 and 15 of the Answer, the examiner is concerned that the word
“hybridizing” (1) could include both the probe and its target as a duplex, and/or (2) is
suggestive of a method step. We recognize that the claim language is less than clear.
However, we do not agree with the examiner’s position that the claims are vague and
indefinite.
As set forth in In re Moore, 439 F.2d 1232, 1235, 169 USPQ 236, 238 (CCPA
1971), 35 U.S.C. §112, second paragraph, requires only that the claims “set out and
circumscribe a particular area with a reasonable degree of precision and particularity.”
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