Appeal No. 1999-1162
Application No. 08/427,837
Rather than reiterate the conflicting viewpoints advanced by the examiner and the
appellants regarding the noted rejections, we make reference to the Examiner's Answer
(Paper No. 14, September 12, 1997) for the examiner's complete reasoning in support of
the rejection, and to the appellants’ Brief (Paper No. 13, July 10, 1997) for the appellants’
arguments thereagainst. As a consequence of our review, we make the determinations
which follow.
Claim Interpretation
Our appellate reviewing court stated in 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):
Analysis begins with a key legal question -- what is the
invention claimed? Courts are required to view the claimed
invention as a whole. 35 U.S.C. § 103. Claim interpretation,
in light of the specification, claim language, other claims and
prosecution history, is a matter of law and will normally control
the remainder of the decisional process. [Footnote omitted.]
To that end, we also note that during ex parte prosecution, claims are to be given their
broadest reasonable interpretation consistent with the description of the invention in the
specification. In re Zletz, 893 F.2d 319, 321, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989).
The term “highly immunogenic” found in claim 9 is not defined, per se, in the
specification. The examples in the specification do not provide a quantitative value
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