Appeal No. 1999-1236
Application 07/571,782
rejected under 35 U.S.C. § 103. As evidence of obviousness, the examiner relies upon
Mutchnick and Eichberg.
We vacate the examiner’s rejections and institute a new ground of rejection.
DISCUSSION
“The name of the game is the claim.” In re Hiniker Co., 150 F.3d 1367, 1369,
47 USPQ2d 1523, 1529 (Fed. Cir. 1998). In deciding patentability issues under
35 U.S.C. § 103, the court observed in Panduit Corp. v. Dennison Mfg. Co., 810 F.2d
1561, 1567-68, 1 USPQ2d 1593, 1597 (Fed. Cir.), cert. denied, 481 U.S. 1052 (1987),
“Analysis begins with a key legal question--what is the invention claimed?” since “[c]laim
interpretation...will normally control the remainder of the decisional process.”
Here, both rejections revolve around the use of the phrase “hepatic
decompensation” in the claims. The examiner believes that the phrase, added by
amendment, does not enjoy written descriptive support in the original disclosure of this
application. Appellant disagrees and urges that this phrase distinguishes the claimed
invention from the prior art.
Our review of the record leads us to conclude that the real issue in this appeal is the
scope and meaning of the phrase “hepatic decompensation,” which in our view, cannot be
readily ascertained. Until the scope of this phrase can be readily ascertained, it is
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