Ex parte RAULSTON et al. - Page 10




                 Appeal No. 1996-3887                                                                                                                   
                 Application 07/883,434                                                                                                                 
                 from water as in dry land or isolated from the environment of the insect host body or                                                  
                 isolated from the insect host as [the] claims do not distinguish any of the foregoing from                                             
                 any other unspecified environment” (paper no. 15, page 16).  The phrase “isolated and                                                  
                 substantially pure” is said to be indefinite because:                                                                                  
                          the nematode is isolated as an individual nematode from another nematode                                                      
                          and is pure nematode as it is a nematode and not part some other worm or                                                      
                          multicellular animal, rather the nematode is per se pure nematode                                                             
                          regardless of where it is located or produced, thus such recitation in the                                                    
                          claim is indefinite since it does not indicate how the nematode of claim 46                                                   
                          differs from that nematode in the field which is, as it exists in nature, is                                                  
                          isolated as one individual nematode from another nematode and is pure                                                         
                          nematode as it is a nematode and not part some other worm or multicellular                                                    
                          animal, rather the nematode is per se pure nematode regardless of where it                                                    
                          is located or produced, and thus the claim also does not demonstrate how                                                      
                          claim 46 more narrowly defines claim 16 . . .                                                                                 
                                                                                                                                                       
                          At the risk of being redundant, we can only return to the proposition that “the                                               
                 language employed [in a claim] must be analyzed -- not in a vacuum, but always in light of                                             
                 the teachings of the prior art and of the particular application disclosure as it would be                                             
                 interpreted by one possessing the ordinary level of skill in the pertinent art.”  In re Moore,                                         
                 439 F.2d 1232, 1235, 169 USPQ 236, 238 (CCPA 1971) (footnote omitted).  Having                                                         
                 reviewed the claims in light of the specification, we are persuaded that one skilled in the                                            
                 art would have no difficulty in interpreting the language of the present claims.  Moreover,                                            
                 we find that claims 46 and 47 further limit claim 16, from which they depend.                                                          
                          Accordingly, the rejections of the claims under 35 U.S.C.  112, first and fourth                                             
                 paragraphs, are reversed.                                                                                                              


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