Appeal No. 2001-2394 Page 5
Application No. 08/437,306
“The standard of indefiniteness is somewhat high; a claim is not indefinite
merely because its scope is not ascertainable from the face of the claims.”
Amgen, Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1342, 65 USPQ2d
1385, 1406 (Fed. Cir. 2003). Rather, a “claim is indefinite if, when read in light of
the specification, it does not reasonably apprise those skilled in the art of the
scope of the invention.” Id. “The test for definiteness is whether one skilled in
the art would understand the bounds of the claim when read in light of the
specification.” Miles Laboratories Inc. v. Shandon Inc., 997 F.2d 870, 875, 27
USPQ2d 1123, 1126 (Fed. Cir. 1993).
We do not agree that the claims are indefinite because they use the terms
“mutation”, “allelic variation”, “hybridizes”, “specifically hybridizes”, and
“stringent”. As pointed out by Appellants, these terms are adequately defined in
the specification (see, e.g., page 6 for exemplary stringent and non-stringent
hybridization conditions, pages 7-8 for a discussion of JE mutations, and page 7,
lines 1-3, for a definition of allelic variations). Thus, these terms would not have
prevented those skilled in the art from understanding the scope of the claims.
With regard to claims 6 and 7, the examiner has not adequately shown that the
difference in claim language (“DNA” versus “DNA sequence”) would have
prevented those skilled in the art from understanding the scope of the claimed
subject matter.
We do, however, agree with the examiner that the term “essentially the
same” renders claims 5-8, 25-27, and 29-35 indefinite. “Essentially the same” is
a term of degree like “about” or “substantially”. Such terms are not per se
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