Appeal No. 2006-1517 Page 5
Application No. 09/976,423
In addition, the passage stating that the reagents “generate a genomic profile for
use in selecting a perioperative course of action for said subject,” merely recites the
intended outcome of using the regents. The specification defines “genomic profile” as
“a set of information about a given ‘subject’s’ genes (e.g., the presence or absence of a
specific set of mutations or ‘SNPs’).” Page 27, lines 13-14. Thus, the “genomic profile”
recited in the claims refers simply to the data showing the presence or absence of the
recited variant alleles, and reagents that are sufficient to detect alleles in at least two of
the recited genes are therefore, by definition, capable of generating a genomic profile.
Finally, the kit defined by claim 72 comprises “a computer program comprising
instructions which direct a processor to analyze data derived from use of said reagents.”
Claim 106 is similar to claim 72 in that it requires the same reagents (which are
termed “component parts” in claim 106). As with claim 72, the claim language stating
that the “subject [is] a patient scheduled for a surgical procedure that has not yet
completed said surgical procedure” recites nothing more than an intended use of the
claimed kit, and does not further limit the claim. Likewise, the recitation “so as to
generate a genomic profile” also does not further limit the claim, because detecting the
presence or absence of alleles in at least two of the recited genes by definition
generates a genomic profile.
Finally, the claim language following “so as to generate a genomic profile” recites
nothing more than the intended use of the genomic profile that is to be generated by the
kit, and does not further limit the claimed kit. That is, the kit requires regents
(“component parts”) sufficient to detect polymorphisms in at least two of the recited
genes, thereby generating a genomic profile, but the reagents that are capable of
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