Appeal No. 2006-1517 Page 6
Application No. 09/976,423
detecting those alleles are the same regardless of whether the resulting genomic profile
is used as recited in claim 106; the intended use language at the end of the claim
therefore does not constitute a structural limitation of the claimed kit.
Claim 106 differs from claim 72 in that it does not require the claimed kit to
comprise a computer program in addition to the component parts that detect the
presence of variant alleles.
2. Written Description
The examiner rejected claims 72-105 under 35 U.S.C. § 112, first paragraph, for
lack of adequate written description; that is, being based on new matter. The examiner
argued that “the specification does not describe or discuss ‘a computer program
comprising instructions which direct a processor to analyze data derived from use of
said reagents.” Examiner’s Answer, paragraph bridging pages 3 and 4. See also page
6: “The concept of ‘a computer program comprising instructions which direct a
processor to analyze data derived from use of said reagents’ does not appear to be part
of the originally filed invention.”
However, on page 4 of the Examiner’s Answer, the examiner quotes the
following passage from the specification: “In some embodiments, a computer-based
analysis program is used to translate the raw data generated by the genomic profile
(e.g., the presence or absence of a given SNP or mutation) into data of predictive value
for the clinician (e.g., probability of abnormal pharmacological response, presence of
underlying disease, or differential diagnosis of known disease)” (emphases added).
While this passage does not use precisely the same words as claim 72, we agree with
Appellant that it reasonably describes the limitation recited in the claim.
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