Appeal No. 2001-0544 Page 11
Application No. 08/195,048
phenol derivatives, in which case phenol can also carry one or more substituents
which can be C1-C3-alkyl groups and chlorine and/or bromine atoms.”).
Thus, the specification makes clear that the defining characteristic of the
claimed method is the inclusion of phenol (or a phenol derivative) in the wash
solution, and that the phenol is added in order to “stabilize the labeling enzyme.”
It is therefore clear that the specification unambiguously limited the scope of its
disclosure to wash solutions useful in enzyme immunoassays. That disclosure
limits the permissible scope of later-added claims such as claim 25.
Appellant argues that the specification shows that he was in possession of
the method of claim 25, citing page 1, lines 11-21 of the specification. Appeal
Brief, pages 24-25. Appellant also argues that enzyme-linked immunosorbent
assays (ELISAs) are only an example of solid-phase immunometric assays
recited in claim 25. See the Reply Brief, pages 2-3.
These arguments are not persuasive. As discussed above, the
specification makes clear that the phenol-containing wash solution is disclosed
for use with enzyme immunoassays. Claim 25, by contrast, is not limited to
enzyme immunoassays, or even, in fact, to immunoassays. By its terms, claim
25 encompasses any detection method in which an analyte is bound by a solid-
phase “ligand,” the solid phase is washed with a phenol-containing solution, and
the analyte is then detected, by any means. The specification does not show
that Appellant invented what is claimed by claim 25. Cf. Gentry Gallery, Inc. v.
Berkline Corp., 134 F.3d 1473, 1479, 45 USPQ2d 1498, 1503 (Fed. Cir. 1998)
(“To fulfill the written description requirement, the patent specification ‘must
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