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).
107
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