Appeal No. 95-1484
Application 08/070,650
a particular area with a reasonable degree of precision
and particularity. It is here where the definiteness of
the language employed 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 level of skill
in the pertinent art.
“Once having ascertained exactly what subject matter is being
claimed, the next inquiry must be into whether such subject
matter is novel.” In re Wilder, 429 F.2d 447, 450, 166 USPQ
545, 548 (CCPA 1970). “Before considering the rejections
under
35 U.S.C. §§ 103 and 112, we must first decide . . . [what]
the claims include within their scope.” In re Geerdes, 491
F.2d 1260, 1262, 180 USPQ 789, 791 (CCPA 1974). With regard
to the scope of the claimed process, the examiner focused on
the product-producing microorganism rather than the product
being produced (Ans., p. 3, first para.):
The only method left to determine if a microorganisms
[sic] fits within the claim is to run the process itself.
However, even this is not sufficient since there is no
guidance provided as to what constitutes “substantially”
pure product or “substantially” continuous agitation.
Thus
even if one skilled in the art ran the process, the
artisan
would be left to guess as to whether the microorganism
would
fit within the scope of the claims. Thus the isolation
or
even identification of bacterial strains of Acetobacter
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