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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