Appeal No. 2001-0103
Application 08/763,465
been positively recited in claims 27-29 or 32. (Examiner’s Answer, page 4, lines 6-9;
page 8, lines 12-13).
The Appellant states that claim 27 depends from claim 26, and claim 26 recites
that the sleeve reaction chamber is “constructed and adapted to be inserted into an
instrument constructed to contain an array of such reaction chambers” (Appeal Brief,
page 12, lines 8-14) (emphasis in original). The Appellant reasons that as the element
is positively recited in claim 26, the rejection is improper.
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”)
“[T]he definiteness of the language employed 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).
Claim 1, a Jepson claim, recites a microfabricated chemical reactor which
comprises a sleeve reaction chamber including a slot. Claim 26 limits the sleeve
reaction chamber of claim 1 by stating that each sleeve reaction chamber be
“constructed” and “adapted” such that it can be in the form of an array in the instrument.
Claim 26 is directed to a sleeve reaction chamber, not an array of sleeve reaction
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