Appeal No. 2006-1517 Page 7
Application No. 09/976,423
The examiner also rejected the claims because “[t]here is no disclosure in the
instant specification of a kit comprising reagents and a computer program.” Examiner’s
Answer, page 4. See also page 5 (“there are no teachings of a computer program
within a kit”).
Again, however, we agree with Appellants that the specification describes the
combination of a computer program and allele-detecting reagents, although not
precisely in the terms used in the claims. The specification describes kits comprising
reagents capable of detecting variant alleles of various genes (see, e.g., page 6, lines
15-20) and describes a “computer-based analysis program . . . to translate the raw data”
generated by such kits (page 50, lines 8-12).
Moreover, the specification states that “Figure 2 illustrates the transformation of a
sample . . . into data useful for the clinician.” Page 50, lines 21-22. “[A] sample is
obtained from a subject and submitted to a genomic profiling service (e.g., clinical lab at
a medical facility, genomic profiling business, etc.) to generate raw data. . . . Once
received by the genomic profiling service, the sample is processed and a genomic
profile is produced (i.e., genomic data), specific for the medical or surgical procedure
the subject will undergo.” Page 50, line 22 to page 51, line 7.
The specification also contemplates that the party generating the genomic profile
from the sample will process the data into a more easily understood format. See page
51, lines 8-15: “The genomic profile data is then prepared in a format suitable for
interpretation by a treating clinician. For example, rather than providing raw sequence
data, the prepared format may represent a risk assessment for various treatment
options. . . . [I]n some embodiments, the genomic profiling service generates a report
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