Appeal No. 1999-1510
Application No. 08/447,997
the genome of the claimed cells or transgenics must contain a
recombinant DNA molecule having an Mx-1 promoter operably
linked to a proliferation promoting gene. Such a recombinant DNA
molecule . . . simply does not naturally exist in wild type cells or
mammals.
Appeal Brief, page 14.
“The test for definiteness is whether one skilled in the art would
understand the bounds of the claim when read in light of the specification.” Miles
Laboratories Inc. v. Shandon Inc., 997 F.2d 870, 875, 27 USPQ2d 1123, 1126
(Fed. Cir. 1993). Claims are in compliance with 35 U.S.C. § 112, second
paragraph, if “the claims, read in light of the specification, reasonably apprise
those skilled in the art and are as precise as the subject matter permits.”
Hybritech, Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 1385, 231 USPQ
81, 94-95 (Fed. Cir. 1987).
We agree with Appellants that a person of ordinary skill in the art would
understand the meaning and scope of the claims. The claims are directed to
isolated cells and transgenic animals having a proliferation-promoting gene under
the control of an Mx-1 promoter. The examiner has not alleged that those skilled
in the art would be unable to recognize a particular gene as a proliferation-
promoting gene or a particular promoter as an Mx-1 promoter. Thus, we cannot
agree that the claims are indefinite.
Whether the claimed cells and transgenic animals display a “characteristic
phenotype” is simply not germane. “The purpose of claims is . . . to state the
legal boundaries of the patent grant.” S3 Incorporated v. NVidia Corp., 259 F.3d
1364, 1369, 59 USPQ2d 1745, 1748 (Fed. Cir. 2001). The claims on appeal do
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