Appeal No. 2006-1547 Page 6
Application No. 10/114,668
A specification must conclude with claims “particularly pointing out and distinctly
claiming the subject matter which the applicant regards as his invention.” 35 U.S.C.
§112, ¶ 2 (2000). The purpose of 35 U.S.C. §112, ¶ 2, is to “reasonably apprise those
skilled in the art of the scope of the invention.” Miles Labs., Inc. v. Shandon, Inc.,
997 F.2d 870, 875, 27 USPQ2d 1123, 1126 (Fed. Cir. 1993). In examining the claims of
an application, the PTO is permitted to “adopt the broadest reasonable meaning of the
words in their ordinary usage as they would be understood by one of ordinary skill in the
art, taking into account whatever enlightenment by way of definitions or otherwise that
may be afforded by the written description contained in the applicant's specification.”
In re Morris, 127 F.3d 1048, 1054, 44 USPQ2d 1023, 1027 (Fed.Cir.1997); In re Crish,
393 F.3d 1253, 1256, 73 USPQ2d 1364, 1367 (Fed.Cir. 2004).
Claim 1 requires a DNA primer composition that comprises a “pulse-jet deposited
polymerase.” “Pulse-jet deposited” has been construed to define the method (“pulse-
jet”) by which the polymerase is immobilized (“deposited”) on the surface of the solid
support. It is a meaningful limitation since it would localize the polymerase to a discrete
region on the solid support by virtue of the jet-pulse process. See, Specification, ¶ 26.
The polymerase is not imbued with any additional distinguishing features, other than it
possess “template dependent primer extension” polymerase activity as expressly
recited in the claim. Our construction relies on both the ordinary usage of the phrase
and the written description which describes the use of pulse jet deposition protocols to
immobilize DNA polymerase. Id., page 27, B. The construction is consistent with the
structure of independent claims 1 and 19 which require the “pulse-jet deposited
polymerase” to be a component of the “DNA primer composition” which, itself, is
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