Appeal No. 1998-0900
Application No. 08/290,047
(Id.) However, claim 3 depends from claim 1 and is directed to "[p]olymerisable
optically active dipeptides according to claim 1, which are derived from" a defined group
of amino acids. We read this claim to be directed to the optically active dipeptides of
claim 1. Since the examiner does not find claim 1 indefinite in this regard, we do not
agree that the use of product-by-process description as an alternative manner of
claiming the subject matter would render claim 3 indefinite as to what is claimed.
It is well established that "definiteness of the language employed must be
analyzed, not in a vacuum, but always in light of 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). The purpose of the second paragraph of Section 112 is to
basically insure, with a reasonable degree of particularity, an adequate notification of
the metes and bounds of what is being claimed. See In re Hammack, 427 F.2d 1378,
1382, 166 USPQ 204, 208 (CCPA 1970). Here, the examiner has failed to explain why
the cited phrases result in claims 1 and 3 failing to meet the above standard. The
examiner has the initial burden of demonstrating indefiniteness of the claims. In re
Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). Thus, the
examiner has not convincingly demonstrated that one of ordinary skill would not readily
recognize the metes and bounds of the rejected claims. We, therefore, reverse the
rejection of claims 1 - 3 under 35 U.S.C. § 112, second paragraph.
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