Appeal No. 1997-2204
Application No. 08/440,989
Respecting the issue of indefiniteness under 35 U.S.C. § 112, second paragraph,
we observe that “the definiteness of the language employed [in a claim] 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.” In re Moore, 439 F.2d 1232, 1235, 169 USPQ 236, 238 (CCPA
1971).
In arguing that claim 21 does not comply with the definiteness requirement of 35
U.S.C. § 112, second paragraph, the examiner sets forth a series of cryptic, staccato-like
questions (Examiner’s Answer, page 5). The examiner does not, however, provide any
analysis of what the specification discloses or how persons skilled in the art would read
claim 21 in light of the specification. Absent such analysis, we will not sustain this rejection.
Invoking the rubric of "undue experimentation" under 35 U.S.C. § 112, first
paragraph, the examiner questions appellant's disclosure respecting "how to use"
mammalian tissue with blocked opiate receptors (Examiner’s Answer, page 4), the
breadth of "mammalian tissue" (Examiner’s Answer, page 5), and “how to make” certain
embodiments encompassed by the claims (Examiner’s Answer, page 8). By now it is well
settled that the examiner bears the initial burden of providing reasons why a supporting
disclosure does not enable a claim. In re Marzocchi, 439 F.2d 220, 223, 169 USPQ 367,
369 (CCPA 1971). It has long been held that "[t]o be enabling, the specification of a patent
must teach those skilled in the art how to make and use the full scope of the claimed
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