Appeal No. 1997-2209
Application No. 08/179,196
by one skilled in the art and do not themselves render the
claims indefinite” (brief, page 5). Further, with respect to
claims 31 and 32, the appellants argue that the “most
reasonable basis understandable from the application is in
fact the basis of total weight of the composition” (brief,
page 6). We disagree with the examiner’s conclusions.
The examiner bears the initial burden of presenting a
prima facie case of unpatentability, whether it be based on
prior art or on any other ground. In re Oetiker, 977 F.2d
1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). The legal
standard for definiteness is whether a claim reasonably
apprises those of skill in the art of its scope. See Amgen
Inc. v. Chugai Pharmaceutical Co. Ltd., 927 F.2d 1200, 1217,
18 USPQ2d 1016, 1030 (Fed. Cir.), cert. denied sub nom.,
Genetics Inst., Inc. v. Amgen, Inc., 112 S.Ct. 169
(1991)(citing Shatterproof Glass Corp. v. Libby-Owens Ford
Co., 758 F.2d 613, 624, 225 USPQ 634, 641 (Fed. Cir. 1985)).
Here, the examiner has not provided evidence that one
skilled in the relevant art would consider the term “lower
6
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007