Appeal No. 2003-0480 Page 10
Application No. 08/090245
burden in the wrong place. It is the applicants’ burden to precisely
define the invention, not the PTO’s.
Here, as in Morris1, appellants fail to make the intended meaning of their
claim explicitly clear. Accordingly, we find no error in the examiner’s rejection.
Therefore, we affirm the rejection of claim 85 under 35 U.S.C. § 103 as being
unpatentable over Schochetman in view of Schenck and Conover, further in view
of appellants statements as to the state of the art at pages 3-6 of the
specification.
Claim 86:
Appellants do not dispute the examiner’s finding (Answer, page 8) that
transducers are known in the art. See Reply Brief, page 15, “transducers are
known in the art, as discussed on pages 3-6 of the specification….” Instead,
appellants argue (Brief, page 14):
One of ordinary skill in the art would not have had a reasonable
expectation of success that the catalytic antibodies of Schochetman
would be able to change the environment in response to an analyte
in a way that a transducer … can measure without the hindsight
afforded by the present invention.
Claim 86 requires, inter alia, the catalytic monoclonal antibody be
immobilized on a surface of, or on a surface associated with a transducer. To aid
our interpretation of this limitation we note that appellants’ specification discloses
(bridging paragraph, pages 41-42), “catalytic antibodies … may be immobilized
on a surface of the transducer or on a separate surface which is
1 In re Morris, 127 F.3d at 1056, 44 USPQ2d at 1029.
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