Appeal No. 2006-0258 Page 11
Application No. 09/755,747
In the context of appellant’s claimed invention, we find that part (a) of
claim 1 to read “a complex consisting of a single DNA strand of a double
stranded DNA of at least 40 base pairs containing the locus of a variation,
wherein said single DNA strand is within a monolayer of single DNA strands
which are bound to a solid surface. . . .” There is no requirement that the single
DNA strand be attached directly to the solid surface. Part (a) of claim 1 simply
requires that the single DNA strand be “bound” to a solid surface. With the
benefit of the Strohner Declaration we find that single DNA strands of a double
stranded DNA bound to a streptavidin coated microtiter plate, such as the one
described at page 24, lines 10-13, will inherently result in a monolayer of single
DNA strands as set forth in appellant’s first claim. As set forth in Kennecott
Corp., 835 F.2d at 1422, 5 USPQ2d at 1197, “[b]y disclosing in a patent
application a device that inherently performs a function, operates according to a
theory, or has an advantage, a patent applicant necessarily discloses that
function, theory, or advantage even though he says nothing concerning it.”
Accordingly, it is our opinion that by disclosing that PCR products can be
attached to streptavidin coated microtiter plates appellant has provided sufficient
descriptive support to include the term “monolayer” as done so in the claims
before us on appeal. Therefore, we reverse the rejection of claims 1-5, 7-18, 20-
31, 33-44, 46-52, and 67-76 stand rejected under 35 U.S.C. § 112, first
paragraph.
Obviousness:
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