Appeal No. 1996-2240
Application No. 08/105,482
mammal, reptile, amphibian, etc.?” ) we are persuaded that one skilled in the art would
have no difficulty in understanding the metes and bounds of these terms, and that
“[b]readth is not indefiniteness.” In re Gardner, 427 F.2d 786, 788, 166 USPQ 138, 140
(CCPA 1970). To the extent that this rejection concerns the identity of certain terms (“The
‘P05' recited in claim 26 is indefinite since this designation represents an individual
laboratory-assigned label . . .”), we find that the claims are not indefinite when read in light
of the specification.
The rejection of claims 1 through 32 under 35 U.S.C. § 112, second paragraph, is
reversed.
Obviousness
“The name of the game is the claim,” In re Hiniker Co., 150 F.3d 1362, 1369, 47
USPQ2d 1523, 1529 (CAFC 1998). As always, “[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). In its broadest aspect, the claimed screening method comprises comparing
the electrical signal pattern generated by multiple preselected constituents in a biological
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