Appeal No. 1996-1273
Application 07/956,003
1576, 1 USPQ2d 1081, 1088 (Fed. Cir. 1986).
The record on appeal does not contain any analysis by the examiner establishing that one of
ordinary skill in this art would not understand what is claimed by the claim language “a Vitamin B -
12
analogue that binds Castle’s intrinsic factor,” found in each of independent claims 25 through 28, when
read in light of the specification. Thus, in giving this claim language the broadest reasonable
interpretation consistent with appellants’ specification as it would be interpreted by one of ordinary skill
in this art, In re Morris, 127 F.3d 1048, 1053-56, 44 USPQ2d 1023, 1027-30 (Fed. Cir. 1997); In
re Zletz, 893 F.2d 319, 321-22, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989), the appealed claims
encompasses any and all Vitamin B -analogues that bind Castle’s intrinsic factor even though
12
extended cogitation may be necessary for one skilled in this art to comprehend the entire scope of the
class of Vitamin B -analogues. See, e.g., In re Gardner, 427 F.2d 786, 788, 166 USPQ 138, 140
12
(CCPA 1970) (“Breadth is not indefiniteness.”). See appellants’ reply brief (pages 2-3). Accordingly,
we reverse this ground of rejection.5
Turning now to the ground of rejection of the appealed claims under 35 U.S.C. § 103 over
Ranney or Papahadjopoulos or Geho or Guo in view of Russell-Jones or vice versa (answer, pages 4- 6
8), it is well settled that in order to establish a prima facie case of obviousness, “[b]oth the suggestion
and the reasonable expectation of success must be found in the prior art and not in applicant’s
disclosure.” In re Vaeck, 947 F.2d 488, 493, 493-95, 20 USPQ2d 1438, 1442, 1443-44 (Fed. Cir.
1991). Thus, the examiner must establish a prima facie case of obviousness by showing that some
objective teaching or suggestion in the applied prior art taken as a whole and/or knowledge generally
available to one of ordinary skill in the art would have led that person to the claimed invention, including
each and every limitation of the claims, without recourse to the teachings in appellants’ disclosure. See
5Because we find that the examiner has not established a prima facie case of indefiniteness under the
second paragraph of § 112, we have not considered either the Schneider or Hogenkamp references
cited by appellants at page 7 of their principal brief or the U.S. patents cited by appellants at page 3 of
their reply brief.
6The references relied on by the examiner with respect to this ground of rejection are listed at page 3
of the answer.
- 3 -
Page: Previous 1 2 3 4 5 6 7 8 9 Next
Last modified: November 3, 2007