Appeal No. 1996-3887
Application 07/883,434
Here, even where specification page 5, line 24 to page 6, line 14 has been
asserted to indicate otherwise as to the “isolated from the environment” and
“inert carrier”, the instant claim terminology does not contain the recitation of
that part of the specification nor do pages 5 and 6 indicate a definition of
“isolated from the environment” nor does page 5, line 24 to page 6, line 14
per se define “inert carrier” as merely supplying examples do not set limits to
same nor necessarily define same . . . (specification, page 17).
We disagree with the examiner’s conclusion and the underlying analysis. The
claims need not “contain the recitation of that part of the specification.” Rather, we look to
appellants’ specification to determine the how one possessing the ordinary level of skill in
the art would interpret the claims. In re Moore, 439 F.2d 1232, 1235, 169 USPQ 236, 238
(CCPA 1971). Again, we agree with appellants that “any composition of S. riobravis which
is naturally occurring would not fall within the scope of the claims;” and that one skilled in
the art, upon reading the present disclosure, would interpret “isolated from the
environment” as describing S. riobravis “free from or isolated from its natural
surroundings.” Reply Brief, paper no. 16, December 27, 1994, pages 19-20.
In the Supplemental Answer (paper no. 19, page 22), the examiner adds that the
“isolated and substantially pure” composition of claim 46, and the “pure” composition of
claim 47 “are not differentiable from the naturally occurring products out in the field”
because:
the nematode is isolated as an individual nematode from another nematode
and is pure nematode as it is a nematode and not part some other worm or
multicellular animal, rather the nematode is per se pure nematode
regardless of where it is located or produced, thus such recitation in the
claim does not distinguish how the nematode of claim 46 differs from that
nematode in the field which is, as it exists in nature, is isolated as one
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