Appeal No. 1999-0925
Application No. 08/735,916
provides that the claims shall claim "the subject matter which
the applicant regards as his invention," and we are aware of
no authority to the effect that the claims are indefinite
unless the claimed subject matter is limited to what will be
sold in the market place, as the examiner apparently believes.
Compare In re Breslow, 616 F.2d 516, 519, 205 USPQ 221, 225
(CCPA 1980) (permissible to claim a transitory compound which
is unstable
and cannot be isolated).
The examiner’s real concern seems to be that the claims
are drawn to subject matter which is nonstatutory under 35
U.S.C.
§ 101, because it includes, or "will have to positively claim
[, part of] the patient," namely, the bone. However, 3
assuming that the inclusion of bone in the claimed combination
would violate § 101, there would be no violation here because
the bone is not so claimed, nor is it apparent why it would
3This position is evidently based on the Commissioner’s
Notice of April 7, 1987 (1077 O.G. 24 (Apr. 21, 1987)), which
stated that "A claim directed to or including within its scope
a human being will not be considered patentable subject matter
under 35 U.S.C. § 101."
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