Appeal No. 1998-2088
Application 08/372,712
would satisfy the limitation “substantially increase the efficiency of a compound as a
copper extract.” In Mattison, the court in reversing the rejection under 35 U.S.C. §
112, second paragraph, held that because the specification disclosed general
guidelines “for a proper choice of substituent” together with a representative number
of examples, one skilled in the art would be able to determine the scope of the
invention. As discussed supra, the present specification provides guidance as to
the extent to which TNF-a activity must be reduced. According to Appellants’
disclosure, this reduction must effect a reduction in inflammation, further implying
that the individual (patient) must also manifest inflammation. Therefore, the
Examiner’s concern that the claims embrace individuals suffering from Alzheimer’s,
Parkinson’s, Autism or migraine (Answer, page 6) is misplaced, at least to the
extent such patients are not also suffering from inflammation and in need of an
effective antiinflammatory amount of a compound.
Additionally, we believe that the Examiner’s concern of the breadth of the
claims to be misplaced because the Examiner has improperly equated breadth with
indefiniteness. It is well established that “breadth is not indefiniteness.”
In re Gardner, 427 F.2d 786, 788, 166 USPQ 138, 140 (CCPA 1970).
In reading the claim as a whole, considering the teachings found in the
specification and being mindful that the second paragraph of section 112 simply
requires the claims to “set forth and circumscribe a particular area with a
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