Appeal No. 1995-2789
Application No. 07/788,114
the nucleotides shown in Figure 4?” In this regard, we remind the examiner that
before issues related to the patentability of the claimed subject matter can begin
to be considered, the examiner must determine what is being claimed. As set
forth in In re Moore, 439 F.2d 1232, 1235, 169 USPQ 236, 238 (CCPA 1971):
[T]he claims must be analyzed first in order to
determine exactly what subject matter they
encompass....
The first inquiry therefore is merely to
determine whether the claims do, in fact, set out and
circumscribe a particular area with a reasonable
degree of precision and particularity. It is here where
the definiteness of the language employed 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.
However, not withstanding the examiner’s concern about the clarity of the
claimed invention, the examiner does not reject the claimed invention under 35
U.S.C § 112, second paragraph. The legal standard for indefiniteness under 35
U.S.C § 112, second paragraph, 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. 1991). As set forth in
Amgen:
The statute requires that “[t]he specification shall conclude
with one or more claims particularly pointing out and distinctly
claiming the subject matter which the applicant regards as his
invention.” A decision as to whether a claim is invalid under this
10
Page: Previous 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 Next
Last modified: November 3, 2007