Appeal No. 1997-2193
Application 07/986,648
it is defined by appellants in their disclosure and as said
terminology would have been understood by a person of ordinary
skill in the art. Rather than ascertaining the metes and
bounds of the claimed compounds by reference to the
specification and the definitions of the claim terminology
found therein, the examiner has focused on individual claim
terms, in a vacuum, without regard to their meaning as defined
in the disclosure and without regard to the context of their
meaning in the claimed compounds considered as a whole. The
examiner's stated positions with regard to appellants’ alleged
failure to comply with paragraph 2 of the statute are founded
on speculation and conjecture rather than objective evidence
which supports the positions taken by him.
Admittedly, the claims are of considerable scope;
however, this, in and of itself, is not a basis for rejection.
U.S. Steel Corp. v. Phillips Petroleum Co., 865 F.2d 1247,
1251, 9 USPQ2d 1461, 1464 (Fed. Cir. 1989). As the court
suggested in In re Borkowski, 422 F.2d 904, 910, 164 USPQ 642,
646 (CCPA 1970), the proper approach to take when claims are
found to be considerable in scope is to reject such claims on
prior art, not reject them under the second paragraph of the
statute.
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