Appeal No. 1999-1458
Application No. 07/943,812
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
pertinent art.” In re Moore, 439 F.2d 1232, 1235, 169 USPQ 236, 238 (CCPA
1971).
According to the examiner (Answer, page 4) “[c]laims 1, 54 and 55 are
indefinite in their recitation of nucleotide numbers because the frame of
reference (i.e. which base is “0” or “1”) is not clearly defined.” In response,
appellants argue (Brief, page 5) that:
[A]s a matter of scientific convenience, the base numbering of
upstream regulatory regions typically relates to the start of
transcription for the corresponding gene. Thus, even if there were
no information in the literature on the numbering for these particular
genes, and no guidance in the instant specification as to what
regions are encompassed by the recitation of “-550 to –50,” the
claims would, nonetheless, be clear. Those of skill in the art would
understand the claims to include those residues that are 50 to 550
bases upstream of the translational start site, simply by convention.
4
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 Next
Last modified: November 3, 2007