Appeal No. 1996-1281
Application 07/945,295
the examiner's failure to address the material presented in Example 3 beginning at
page 24 of the Specification which appellants urge constitutes a comparison of the
bovine and human antigens presented. (Principal Brief, page 13). We are left with no
indication as to whether the examiner failed to consider this evidence or found it
unpersuasive and if unpersuasive the basis for that determination. We, therefore,
vacate the rejection of claims 11-13 over Targoff and remand the application to the
examiner for further consideration of the claims in this application in view of the remarks
which follow.
Having reversed the rejection of claims 11-15 and 26 under 35 U.S.C. § 112,
second paragraph, and vacated the rejection of claims 11-13 under 35 U.S.C. § 102(b)
or, alternatively, under 35 U.S.C. § 103, all claims presently in this case are free of
rejection.
Other Issues
Upon return of the application to the examiner, we would urge the examiner to
step back and consider anew the patentability of at least claim 11. The question
presented by this appeal is whether the bovine Mi-2 antigen disclosed by Targoff falls
within the scope of claim 11. However, before this can be determined, it must first be
ascertained just what is claimed. In making a patentability determination, “[a]nalysis
begins with a key legal question -- what is the invention claimed?” since “[c]laim
interpretation . . . will normally control the remainder of the decisional process,” 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).
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