Appeal No. 1998-1880
Application No. 08/423,865
THE REJECTION UNDER 35 U.S.C. § 112, SECOND PARAGRAPH:
As set forth in Amgen Inc. v. Chugai Pharmaceutical Co., Ltd., 927 F.2d
1200, 1217, 18 USPQ2d 1016, 1030 (Fed. Cir. 1991):
The statute requires that “[t]he specification shall conclude with
one or more claims particularly pointing out and distinctly claiming the
subject matter which the applicant regards as his invention.” A
decision as to whether a claim is invalid under this provision requires
a determination whether those skilled in the art would understand what
is claimed. See Shatterproof Glass Corp. v. Libbey-Owens Ford Co.,
758 F.2d 613, 624, 225 USPQ 634, 641 (Fed. Cir. 1985) (Claims
must “reasonably apprise those skilled in the art” as to their scope
and be “as precise as the subject matter permits.”).
Furthermore, claim language must be 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 the ordinary skill in the pertinent art.” In re
Moore, 439 F.2d 1232, 1235, 169 USPQ 236, 238 (CCPA 1971).
According to the examiner, claim 1, and claims 2-5 which depend from claim
1, are indefinite because “[c]laim 1 is directed to a method of determining infection
but lacks any such step. An added correlating step is suggested.”
According to appellants’ specification (page 3) “the inventors have
energetically studied and investigated to find out that there is a close correlation
between the intragastric ammonia concentration and H.p.-infection, and by
measuring the concentration, information on the present activity of H.p. at the time of
examination can be obtained…” Furthermore, appellants’ specification discloses
(page 15), as a conclusion to example 1, that “[i]t has been made apparent that
higher ammonia concentrations are detected for H.p.-infected patients in
comparison with those for healthy individuals.”
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