Appeal No. 1999-1221
Application No. 08/342-242
no basis for substituting a gene from the Myb, Myc, Jun, or Rel gene families for
the fos gene in the method disclosed by Kruijer.
The references relied on by the examiner do not support a prima facie
case of obviousness, and we therefore reverse the rejections.
Other Issues
The claims present an unresolved issue of claim construction that may be
relevant to the patentability of the claimed method over the prior art. The issue is
not directly relevant to the rejections on appeal, so we do not reach it, but the
examiner should clarify the proper construction of the claims on the record in light
of the following comments.
The preamble of claim 1 states that it is directed to a “method for
identifying compounds which modulate signal transduction in cells.” It is well-
settled that “a claim preamble has the import that the claim as a whole suggests
for it. In other words, when the claim drafter chooses to use both the preamble
and the body to define the subject matter of the claimed invention, the invention
so defined, and not some other, is the one the patent protects.” Bell
Communications Research Inc. v. Vitalink Communications Corp., 55 F.3d 615,
620, 34 USPQ2d 1816, 1820 (Fed. Cir. 1995). “If, however, the body of the claim
fully and intrinsically sets forth the complete invention, including all of its
limitations, and the preamble offers no distinct definition of any of the claimed
invention’s limitations, but rather merely states, for example, the purpose or
intended use of the invention, then the preamble is of no significance to claim
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