Appeal No. 2001-1581 Page 3
Application No. 08/833,172
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).
Cycloheteroalkyl:
According to the examiner (Answer, page 4), the term “‘cycloheteroalkyl’ is
indefinite. It has no standard meaning, and is internally inconsistent. A
cycloalkyl cannot have a heteroatom in the ring, because it would then no longer
be a cycloalkyl.” In response, appellant argues (Brief, page 6), “[t]he term
‘cycloheteroalkyl’ is clearly well known to those skilled in the art prior to the filing
dates of both the present application and its corresponding provision[al]
application.” According to appellant (id), “cycloheteroalkyl is a saturated ring
which includes at least one heteroatom.” In support of his position, appellant
refers to several United States Patents. See Brief, pages 6-7.
However, as the examiner points out (Answer, page 4), appellant’s
specification offers no evidence that a particular definition was intended for the
term cycloheteroalkyl. In addition, with regard to the evidence relied upon by
appellant, the examiner explains that two of the references provide no definition
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