Appeal No. 2001-1586 Page 11
Application No. 08/402,394
that Markussen ‘212 describes the compound required by claim 33 with the specificity
required by 35 U.S.C. § 102, i.e., Markussen ‘212 anticipates claim 33.
We are aware that a substantial portion of appellants’ position in regard to the
examiner’s rejection is premised upon the prosecution history of Markussen ‘212. For
example, appellants argue at the Reply Brief, page 6:
Thus. Markussen was able to overcome the prior art by arguing that the
shortened B-chain was what gave his invention its novelty and superiority and
argues that a B30 Threonine residue is never present in the precursor. The
Office cannot now say that “X” is equivalent to the B30 Threonine. This would
completely ignore all of the arguments used to overcome the prior art, thereby
invalidating the Markussen patent.
These arguments are more relevant in determining the scope of the Markussen ‘212
claims in an inter partes enforcement action than in determining the relevance the
disclosure of Markussen ‘212 has in determining the patentability of claims pending ex
parte before the USPTO. As seen, this argument is couched in terms of the
patentability of Markussen’s “invention,” not the claims of Markussen ‘212. An inventor
may describe his invention in both broad and narrow terms in the specification of the
application and in the course of prosecution disavow the broader invention by way of
amendment or argument. The fact that a proper construction of the claims in an issued
patent5 may result in a claim scope narrower than the broader description of the
invention in the specification does not mean that the broader description of the invention
disappears from the patent. Rather, the broader description remains there and must be
evaluated for what it means to one of ordinary skill in the art in the context of
determining the patentability of claims pending in this application. We do not
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