Appeal No. 1996-3348
Application No. 08/139195
The court stated that the claim language must be analyzed “not in a vacuum, but always in
light of the teachings of the prior art and of the particular application disclosure as it would
be interpreted by one possessing the ordinary skill in the pertinent art.” When the claim is
read by one skilled in this art, in light of the teachings of the prior art and appellant’s
disclosure, we agree with appellant that “what is being claimed is a DNA probe which
hybridizes to and is effective to detect the recited DNA sequence under specific
conditions. The term hybridizing is clearly not intended to refer to a duplex DNA per se, but
rather to indicate a property of the claimed DNA probe.” See, Brief, bridging paragraph,
pages 8-9. Accordingly, the rejection under 35 U.S.C. § 112, second paragraph, is
reversed.
The provisional rejection of claims 13-15 under the judicially created doctrine of
obviousness-type double patenting:
Appellant did not address the merits of this rejection. Instead, appellant affirms the intent,
at page 16 of the brief, “to file an appropriate terminal disclaimer when the claims are
indicated to be otherwise allowable.” Accordingly, we affirm the rejection of the claims
under the judicially created doctrine of obviousness-type double patenting.
SUMMARY
The rejections of claims 13-15 under 35 U.S.C. § 112, first paragraph and second
8
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 Next
Last modified: November 3, 2007