Appeal No. 1999-1384
Application No. 08/583,912
DISCUSSION
In reaching our decision in this appeal, we considered appellants’
specification and claims, in addition to the respective positions articulated by the
appellants and the examiner. We make reference to the examiner’s Answer2 for
the examiner’s reasoning in support of the rejections. We further reference
appellants’ Brief3, and appellants’ Reply Brief4 for the appellants’ arguments in
favor of patentability. We note that the examiner entered and considered
appellants’ Reply Brief5.
THE REJECTION UNDER 35 U.S.C. § 112, SECOND PARAGRAPH:
As set forth in Amgen Inc. v. Chugai Pharmaceutical Co., Ltd., 927 F.2d
1200, 1217, 18 USPQ2d 1016, 1030 (Fed. Cir. 1991):
The statute requires that “[t]he specification shall conclude
with one or more claims particularly pointing out and distinctly
claiming the subject matter which the applicant regards as his
invention.” A decision as to whether a claim is invalid under this
provision requires a determination whether those skilled in the art
would understand what is claimed. See Shatterproof Glass Corp.
v. Libbey-Owens Ford Co., 758 F.2d 613, 624, 225 USPQ 634, 641
(Fed. Cir. 1985) (Claims must “reasonably apprise those skilled in
the art” as to their scope and be “as precise as the subject matter
permits.”).
Furthermore, claim language must be analyzed “not in a vacuum, but
always in light of the teachings of the prior art and of the particular application
disclosure as it would be interpreted by one possessing the ordinary skill in the
2 Paper No. 12, mailed June 8, 1998.
3 Paper No. 9, received February 18, 1998.
4 Paper No. 13, received August 5, 1998.
5 Paper No. 14, mailed August 17, 1998.
4
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