Appeal No. 96-0419
Application No. 07/928,063
Claims 1, 3, 7 and 9 stand rejected under 35 U.S.C. § 112, second paragraph, as indefinite. 3
Claims 1, 3, 4 and 7 through 10 stand rejected under 35 U.S.C. § 103 as being unpatentable over
Amari in view of Merck. Claims 1, 3, 4, 9 and 10 stand rejected under
35 U.S.C. § 103 as being unpatentable over Miki or Isobe. We reverse these rejections for reasons
which follow.
In reaching our decision in this appeal, we have given careful consideration to the appellant’s
specification and claims, to the applied prior art references, and to the respective positions articulated
by the appellant and the examiner. We make reference to the examiner’s answer (Paper No. 20,
mailed July 19, 1995) for the examiner’s complete reasoning in support of the rejections, and to the
appellant’s brief (Paper No. 19, filed June 26, 1995) and reply brief (Paper No. 21, filed September
19, 1995) for the appellant’s arguments thereagainst.
OPINION
A. Rejection of claims 1, 3, 7 and 9 under 35 U.S.C. § 112, second paragraph, as indefinite.
The legal standard for indefiniteness under 35 U.S.C. § 112, second paragraph, is whether a
claim reasonably apprises those of skill in the art of its scope. See Amgen Inc. v. Chugai
Pharmaceutical Co., Ltd., 927 F.2d 1200, 1217, 18 USPQ2d 1016, 1030 (Fed. Cir.), cert. denied
sub nom., Genetics Inst., Inc. v. Amgen, Inc., 112 S.Ct. 169 (1991). The definiteness of claim
3The examiner has withdrawn the rejection of claims 4, 8 and 10 under 35 U.S.C. § 112, second paragraph,
“to simplify issues for appeal” (Answer, page 3).
3
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