Appeal No. 1999-1221
Application No. 08/342-242
construction because it cannot be said to constitute or explain a claim limitation.”
Pitney Bowes Inc. v. Hewlett Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d
1161, 1165-66 (Fed. Cir. 1999).
In the instant claims, it is an open question whether the preamble
language (“method for identifying compounds which modulate signal transduction
in cells”) has any patentable weight. The preamble language might limit the
claimed method, for example, if the selection of compounds to be tested would
depend on the anticipated effect of the compound on signal transduction. On the
other hand, if any compound might have an effect on signal transduction, the
preamble language might place no additional limits on the method defined in the
body of the claim.
This claim construction issue depends on technical aspects of the
disclosed method and therefore we leave its resolution to the examiner. If the
examiner is uncertain what weight should be given to the above -quoted
language, we remind him that claims are given their broadest reasonable
interpretation consistent with the specification. See, e.g., In re Morris, 127 F.3d
1048, 1054, 44 USPQ2d 1023, 1027 (Fed. Cir. 1997).
We encourage the examiner, after resolving the claim construction issue,
to consider some of the references that are cited by the references relied on in
this appeal. We attach copies of two papers that seem particularly relevant.
Lamph appears to disclose a method comprising exposing cells that express jun
to compounds including cycloheximide and TPA, and monitoring changes in the
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