Ex parte RAULSTON et al. - Page 8

                 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”                                               
                          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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