Appeal No. 1997-4145
Application No. 08/361,328
F.2d 1154, 196 USPQ 209 (CCPA 1977); failure to distinguish one
process from another, In re MacLean, 454 F.2d 756, 172 USPQ 494
(CCPA 1972); the addition of a critical limitation, In re Blaser, 556 F.2d
534, 194 USPQ 122 (CCPA 1977); failure to define a critical term, In re
Lukach, 442 F.2d 967, 169 USPQ 795 (CCPA 1971); and use of a list that
did not contain the claimed substance. In re Ahlbrecht, 435 F.2d 908, 168
USPQ 293 (CCPA 1971).
Appellant relies on the following disclosures in the specification to satisfy both
the written description and enablement requirement (brief, p. 9):
"super-extension of DNA up to at least 0.6 :m per kilobase pair with no evidence
of bond disruption" (p. 7, ll. 1-2);
"a method of extending DNA as a straight line ... reaching at least 0.65 :m per
kilobase pair" (sentence, bridging pp. 8-9);
"[l]esser degrees of stretching, e.g., linearization to a kilobase pair distance of
about 0.34 :m)" (p. 9, ll. 23-25);
"the DNA in these two DIRVISH [i.e., direct visual hybridization] DNA maps is
stretched to approximately twice the theoretical maximum of 0.34 :m, i.e., >0.6 :m" (p.
26, ll. 28-30); and,
"the examples showing both super-extended DNA (at least 0.65 :m) and
extended forms of DNA results (see Example 7 and reference to FIGs 12 and 13)".
Assuming arguendo that the above disclosure inherently supported DNA
stretched to the claimed lengths without breakage, the linchpin question appears to be
whether one skilled in the art could reasonably derive these claim limitations based
- 7 -
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007