Appeal No. 2006-0258 Page 5
Application No. 09/755,747
For his part, appellant directs attention (Brief, page 9), to page 11, lines 9
and 10 of his specification, which discloses “[t]he current binding surface format
used is a 96 well microtitre plate that has been coated with streptavidin (available
from various manufacturers).” According to appellant (Brief, page 10, emphasis
removed), “these types of plates are a generic staple of commerce,” which “can
be obtained from a slew of commercial suppliers.” The examiner finds (Answer,
page 12), however, that claim 1 “has no limitation to the specific plate used but
[instead, it] is broadly drawn to any solid surface.” According to the examiner
(Answer, page 13), “[t]he current claims encompass beads, nitrocellulose paper,
nylon, slides, silicon chips and any other support used in the art.”
While we agree with the examiner’s interpretation of the scope of claim 1,
the question before us on appeal is not an issue of claim scope, e.g., the number
of different solid surfaces that fall within the scope of appellant’s claim. To the
contrary, the question before us on this appeal is whether appellant’s
specification provides written descriptive support for a solid surface to which a
monolayer of single DNA strands are bound.2 Stated differently, is a 96 well
microtitre plate that has been coated with streptavidin, or more specifically,
whether the Boehringer-Mannheim streptavidin-coated plate3 set forth in
2 See e.g., (Answer, page 12), “[t]he question that now arises is whether this statement [at page
11, lines 9-10 of appellants’ specification] is sufficient to disclose a device with an inherent
property of having a ‘monolayer’.”
3 Appellants assert (Brief, page 9), “[t]he specification, at page 24, line 12, explicitly states that a
streptavidin-coated plate purchased from Boehringer-Mannheim was used.”
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