Appeal No. 1998-1880
Application No. 08/423,865
Appellants’ argue (Brief, bridging paragraph, pages 12-13) that the examiner
“has not identified any subject matter for which those skilled in the art would have
any difficulty determining whether the subject matter falls inside or outside the literal
scope of the claims.” In response, the examiner argues (Answer, page 7) that [i]t is
the examiner’s position that merely measuring ammonia and organic amines alone
does not determine if an infection is present and some correlation of the data
obtained is required to make a diagnosis.”
While the examiner may prefer that appellants include a correlation step, in
our opinion, when the claims are read in light of appellants’ specification those
skilled in the art would understand what is claimed. Accordingly, we reverse the
examiner’s rejection of claims 1-5 under 35 U.S.C. § 112, second paragraph.
THE REJECTION UNDER 35 U.S.C. § 103:
“The name of the game is the claim.” In re Hiniker Co., 150 F.3d 1362,
1369, 47 USPQ2d 1523, 1529 (Fed. Cir. 1998). In considering the issues raised in
this appeal, we point out that “analysis begins with a key legal question – what is the
invention claimed?” since “claim interpretation . . . will normally control the remainder
of the decisional process.” Panduit Corp. v. Dennison Mfg. Co., 810 F.2d 1561,
1567-1568, 1 USPQ2d 1593, 1597 (Fed. Cir.), cert. denied, 481 U.S. 1052 (1987).
In this case, the claimed method comprises the steps of (1) collecting gas in
the gastric cavity of a patient and (2) measuring amounts of ammonia and organic
amines in the gas. As set forth in In re Morris, 127 F.3d 1048, 1054, 44 USPQ2d
1023, 1027 (Fed. Cir. 1997):
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