Appeal No. 2001-0692 Page 5
Application No. 09/163,572
As amended, claim 1 now reads on determining the response
activity which is not understood. Compounds may have a response
to some reaction or an activity but not a response activity. Further,
step 1(d) is directed to a positive response where this is not an
activity and is not understood in context. The determination of
whether a reaction takes place or does not is not presently claimed.
“The 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
level of skill in the pertinent art.” In re Moore, 439 F.2d 1232, 1235, 169 USPQ
236, 238 (CCPA 1971). “The purpose of claims is not to explain the technology
or how it works, but to state the legal boundaries of the patent grant. A claim is
not ‘indefinite’ simply because it is hard to understand when viewed without
benefit of the specification.” S3 Incorporated v. NVidia Corp., 259 F.3d 1364,
1369, 59 USPQ2d 1745, 1748 (Fed. Cir. 2001).
We do not find the claims to be indefinite. The claim language, when read
in light of the specification, would be readily understood by those skilled in the
art. See Hybritech, Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 1385,
231 USPQ 81, 94-95 (Fed. Cir. 1987) (Claims comply with 35 U.S.C. § 112,
second paragraph, if “the claims, read in light of the specification, reasonably
apprise those skilled in the art and are as precise as the subject matter
permits.”). The rejection under 35 U.S.C. § 112, first paragraph, is reversed.
2. Anticipation
The examiner rejected claims 1-4 and 9 under 35 U.S.C. § 102(b) as
anticipated by Evans. The examiner noted that Evans “teaches on page 5032
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