Ex parte KAMBOJ et al.; Ex parte FOLDES et al. - Page 107


                       Appeal No.  1997-3221                                                                                                                     
                       Application No.  08/249,241                                                                                                               
                       ‘stringent conditions’ with a polynucleotide defined in claim 1, as claimed in claim                                                      
                       15.”                                                                                                                                      
                                 We note that the limitation “under stringent conditions” was entered in an                                                      
                       amendment (Paper No. 19, received December 22, 1995) filed with appellants’                                                               
                       Brief.  The examiner entered this amendment.  However, upon review of the                                                                 
                       specification we find reference to hybridization at only three portions of the                                                            
                       specification.  Specifically, page 9, line 1 “then hybridized, under carefully controlled                                                 
                       conditions,” page 13, line 39 “by standard hybridization techniques,” and page 14,                                                        
                       lines 32-35 “hybridization conditions: 6X SSC, 50% formamide, 0.5% SDA, 100                                                               
                       ug/ml denatured salmon sperm DNA at 42ºC ….  The filters were washed with 2X                                                              
                       SSC, 0.5% SDS at 25ºC for 5 min., followed by 15 min. washes at 37ºC and at                                                               
                       42ºC.”                                                                                                                                    
                                 We find no reference to “stringent conditions.”  Furthermore, appellants’                                                       
                       intent appears to be (Brief, page 8) “[t]he subject matter of claim 15,                                                                   
                       oligonucleotides that hybridize under stringent conditions to a polynucleotide of                                                         
                       claim 1, does not include any oligonucleotide the same as those of the rat receptor                                                       
                       taught by Moriyoshi.”  Appellants have not demonstrated that the phrase “stringent                                                        
                       conditions” or those conditions recited at page 14 of the specification are capable                                                       
                       of satisfying their intention.                                                                                                            
                                 We remind the examiner and appellants that analyzing claims based on                                                            
                       “speculation as to meaning of the terms employed and assumptions as to the scope                                                          
                       of such claims” is legal error.  In re Steele, 305 F.2d 859, 862, 134 USPQ 292, 295                                                       
                       (CCPA 1962).                                                                                                                              

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