Appeal No. 1995-2297
Application No. 07/797,493
3
commensurate in scope with the invention of claims 4 and 6-8. Claim 1 states “[t]he
chimeric mouse . . . wherein at least 30% of the hematopoietic cells in bone marrow are of
human origin.” As set forth in Comark Communications Inc. v Harris Corp., 156 F.3d
1182, 1187, 48 USPQ2d 1001, 1005 (Fed. Cir. 1998):
. . . While we recognize that the doctrine of claim differentiation is not
a hard and fast rule of construction, it does create a presumption that each
claim in a patent has a different scope. “There is presumed to be a
difference in meaning and scope when different words or phrases are used
in separate claims. To the extent that the absence of such difference in
meaning and scope would make a claim superfluous, the doctrine of claim
differentiation states the presumption that the difference between claims is
significant.” Tandon Corp. v. United States Int’l Trade Comm’n, 831 F.2d
1017, 1023, 4 USPQ2d 1283, 1288 (Fed. Cir. 1987).
According to the doctrine of claim differentiation, one would presume that the “at
least 30%” limitation found in claim 1, means that claims 4 and 6-8 are of a different
scope, for example “[a] chimeric mouse comprising a stable bone marrow graft of human
hematopoietic cells.” See, claim 4. Reisner, Lubin and Kamel all teach such a mouse.
3We note that original claims 1-3 contain this “at least 30%” limitation. We also note, that
appellants point to this limitation (See, Paper No. 10, filed July 6, 1993, page 4) to
overcome the examiner’s rejections under 35 U.S.C. § 102 made in the First Office Action
(See, Paper No. 7, mailed December 29, 1992, page 4).
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