Appeal 2007-1689
Application 10/431,627
sequential addition or coupling of each nucleotide in a final polynucleotide
product” (Specification 1). Appellants further acknowledge it was known
that a “problem in the synthesis of polynucleotides is the presence of
contaminants in the final polynucleotide product” from a number of sources
to maintain purity to obtain “polynucleotides of high quality and long
length” for a number of different applications (id. 2-3).
We determine the plain language of claim 1 specifies an apparatus for
maintaining a closed continuous anhydrous system comprising at least the
five specified components arranged to maintain the closed continuous
anhydrous system. On this record, like the Examiner, we determine the
preambular language “for automatic polynucleotide synthesis” and the
limitation the apparatus has a “dry box capable of forming a seal over a
synthesis platform of an automated polynucleotide synthesizer” in the body
of the claim, requires only that the claimed apparatus must be capable of
functioning with an automated polynucleotide synthesizer and otherwise
adds no additional structural limitation(s). Thus, this claim language in fact
conveys a method or intended use concept which does not specifically
structurally further limit the claimed apparatus. See, e.g., In re Yanush,
477 F.2d 958, 959, 177 USPQ 705, 706 (CCPA 1973); In re Casey, 370 F.2d
576, 579-80, 152 USPQ 235, 237-39 (CCPA 1967); In re Otto,
312 F.2d 937, 939-40, 136 USPQ 458, 459-60 (CCPA 1963); see also, e.g.,
Corning Glass Works v. Sumitomo Elect. U.S.A., Inc., 868 F.2d 1251, 1257,
9 USPQ2d 1962, 1966 (Fed. Cir. 1989); In re Stencel, 828 F.2d 751,
754-55, 4 USPQ2d 1071, 1073 (Fed. Cir. 1987), and cases cited therein
(“Whether a [statement] . . . of intended purpose constitutes a limitation to
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