Appeal No. 2000-0599
Application No. 08/357,363
Patented claim 2 is directed to A[t]he sodium salt of said compound of claim 1.@ We
further note that the terminal portion of any patent granted on the present application
that would extend beyond the expiration date of U.S. Patent No. 5,075,445 has been
disclaimed (see the Terminal Disclaimer recorded under 37 C.F.R. ' 1.321(b)/(c), Paper
No. 29 of the present application).
The claims that are the subject of this appeal are also directed to 9-(4-hydroxy-3-
hydroxymethylbut-1-yl) guanine and certain of its salts, but they stand rejected for
reasons related to the various purity limitations in the claims.
DISCUSSION
I. Indefiniteness
We begin with the proposition that Athe definiteness of the language employed
[in a claim] 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 level of skill in the pertinent art.@ In re Moore, 439 F.2d 1232,
1235, 169 USPQ 236, 238 (CCPA 1971).
Regarding the term Asubstantially pure@ in claims 45 and 46, much has been said
by both the examiner and appellants4 - in our view, most of it irrelevant. The arguments
of appellants and the examiner notwithstanding, the test for definiteness, first and
foremost, is simply whether one skilled in the art would understand the language of the
4 See the 4th through 14th pages of the Answer (after page 3 of the Answer, the
pagination is missing or incorrect); pages 5-10 of the Brief; and pages 8-14 of the Reply
Brief.
5
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