Appeal No. 2001-0936
Application No. 08/952,208
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 ‘the 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”).
The claims recite a single-step reaction which one of
ordinary skill in the art would understand. Even if certain
additional preparatory work were needed to prepare reactants,
they need not necessarily always be recited. Under the facts of
the present case, we conclude there is no omitted essential step.
We therefore reverse this rejection.
7
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007