Appeal No. 1995-2789
Application No. 07/788,114
provision requires a determination whether those skilled in the art
would understand what is claimed. See Shatterproof Glass Corp.
v. Libbey-Owens Ford Co., 758 F.2d 613, 624, 225 USPQ 634, 641
(Fed. Cir. 1985) (Claims must “reasonably apprise those skilled in
the art” as to their scope and be “as precise as the subject matter
permits.”).
Furthermore, claim language 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 skill in the pertinent art.” In re Moore, 439 F.2d 1232, 1235, 169
USPQ 236, 238 (CCPA 1971).
We note that appellants provide an explanation (Brief, page 13) of what is
intended by the use of the phrase “carboxy terminus.” Specifically, appellants
argue (id.) that “[a]s shown in Figure 4 of the application on appeal, the carboxy
terminus of the wild type homoserine dehydrogenase gene has only
approximately 72 bases.” It can only be assumed from the examiner’s failure to
respond to appellants’ argument that the examiner agrees with appellants’
position.
Next, the examiner argues (Answer, bridging sentence, pages 6-7) “[i]n
the absence of further information and guidelines with regard to other mutants in
‘the carboxy terminus’ of the homoserine dehydrogenase gene, it would require
undue experimentation for the ordinary skilled artisan to either make or use the
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