Appeal No. 1997-2795
Application No. 08/438,933
OPINION
I. Rejection of claims 14 and 16 under 35 U.S.C. § 112, second paragraph, as indefinite
The legal standard for indefiniteness under 35 U.S.C. § 112, second paragraph, is whether a
claim reasonably apprises those of skill in the art of its scope. See Amgen Inc. v. Chugai
Pharmaceutical Co., Ltd., 927 F.2d 1200, 1217, 18 USPQ2d 1016, 1030 (Fed. Cir.), cert. denied
sub nom., Genetics Inst., Inc. v. Amgen, Inc., 112 S.Ct. 169 (1991). The definiteness of claim
language is analyzed, not in a vacuum, but always in light of the teachings of the prior art and of the
particular application disclosure as it would be interpreted by one possessing an ordinary level of skill in
the pertinent art. In re Moore, 439 F.2d 1232, 1235, 169 USPQ 236, 238 (CCPA 1971).
According to the examiner, recitation of “[t]he subjective term ‘mild’ used to describe the
sulfation in step a) of claim 14 renders the claims indefinite” (answer, page 4). To the extent the
examiner’s position is that “[t]he specification does not make clear what degree of ‘mildness’ is
intended by the claims” (answer, page 9), it is untenable. Appellants are not required to specify a
particular number as the cutoff between a “mild” and “less mild” degree of sulfation so long as
appellants have provided a general guideline and examples sufficient to enable a person of ordinary skill
in the art to determine whether porcine heparin is being subjected to a “mild” chemical sulfation. In re
Mattison, 509 F.3d 563, 565, 184 USPQ 484, 486 (CCPA 1975). In our view, the specification
provides a general guideline and examples which reasonably apprise the skilled artisan of the scope of
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