Appeal No. 2003-1105 Page 6
Application No. 09/738,461
subject matter claimed, [instead] the description must clearly allow persons of
ordinary skill in the art to recognize that [he or she] invented what is claimed.’”
Nevertheless, in maintaining the rejection under the written description
provision of 35 U.S.C. § 112, first paragraph, the examiner finds (Answer, page
7), “one of ordinary skill in the art cannot carry out the disclosed invention without
a description of how the ‘ionic probe’ is labeled in such a way that digested probe
with the ionic label may be distinguished electronically from undigested probe
bearing the label.” Again, it is our opinion that the reasoning behind the
examiner’s rejection is consistent with the reasoning used to address the
enablement provision of 35 U.S.C. § 112, first paragraph, rather than the written
description provision of 35 U.S.C. § 112, first paragraph. Accordingly, it is our
opinion that the rejection under 35 U.S.C. § 112, first paragraph, is not based on
upon the correct legal standards. Accordingly we vacate the rejection under 35
U.S.C. § 112, first paragraph.
This brings us to the next question ….
II. Are claims 1-9 indefinite in not reciting amplification steps?
According to the examiner (Answer, page 4), “[c]laims 1-5 are confusing
because while the preamble states the method ‘is for detecting the end point for
PCR DNA amplification’, … nothing in the claim body relates to amplification.”
As we understand the Answer, the examiner has the same concern regarding
claims 6-9 which are written in Jepson format. Id.
This rejection appears to be related to the examiner’s concern regarding
the release of labeled ion upon attachment of the ionically labeled probe to a
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