Appeal No. 2000-0920
Application No. 08/829,034
and dominance. In re Hammack, 427 F.2d 1378, 1382, 166 USPQ 204,
208 (CCPA 1970). If the scope of the invention sought to be
patented cannot be determined from the language of the claims
with a reasonable degree of certainty, a rejection of the claims
under 35 U.S.C. § 112, second paragraph, is appropriate. In re
Venezia, 530 F.2d 956, 958, 189 USPQ 149, 151 (CCPA 1976).
In the present case, while claims 11-18 require that the
implant be fabricated from an FDA approved cermet, the underlying
specification offers no guidance whatsoever as to precisely what
constitutes an FDA approved cermet. While it might perhaps be
possible to consult a list compiled by the United States Food and
Drug Administration, if such a listing exists, as to what cermets
are or are not approved for use as an implant material at any
given time, it is reasonable to assume that said list would be
subject to change over time, as when approval is granted (or
withdrawn) upon further consideration by the FDA. Furthermore,
while it may be argued that the terminology in question is with
reference to those cermets that appear on an FDA approved list as
of a particular date,5 there is no indication in the record
before us of what that date may be. In light of these
5For example, the filing date of the application.
15
Page: Previous 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 Next
Last modified: November 3, 2007