Appeal No. 2003-0835 Page 4
Application No. 09/419,371
DISCUSSION
1. Rejection under 35 U.S.C. § 112, second paragraph
Claims 9-20 and 39-50 stand rejected under 35 U.S.C. § 112, second
paragraph.
According to the rejection, “the metes and bounds of ‘dcreb2, activators,
repressors, CREB/CREM/ATF-1 subfamily members, activator isoforms and
repressor isoforms’ remain indefinite as the metes and bounds of the terms
cannot be readily discerned by the skilled artisan as claimed.” Examiner’s
Answer, page 4.
“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). Claims are in compliance with 35 U.S.C. § 112, second
paragraph, if “the claims, read in light of the specification, reasonably apprise
those skilled in the art and are as precise as the subject matter permits.”
Hybritech, Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 1385, 231 USPQ
81, 94-95 (Fed. Cir. 1987).
Appellants argue, and we agree, that the terms dcreb2, activators,
repressors, CREB/CREM/ATF-1 subfamily members, activator isoforms and
repressor isoforms, are definite when read in light of the specification. See
Appeal Brief, page 7. The examiner argues that “neither the metes nor the
bounds of the claims are clear or established without reading the specification
into the claims.” The test for definiteness is, however, is whether one skilled in
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