Appeal No. 2003-2139 Page 9
Application No. 09/812,945
CLAIM CONSTRUCTION
With reference to Texas Instruments Inc. v. United States Int’l Trade
Comm’n, 988 F.2d 1165, 1172, 26 USPQ2d 1018, 1023-1024 (Fed. Cir. 1993),
appellants argue:
The treatment described in the “thereby” clause of claim 1 is
the result of contacting cells with an effective amount of a
compound of formula (I). The recitation of treatment as the result
obtained by contacting cells with an effective amount of a
compound of formula (I) does not change the scope of the
invention otherwise defined by claim 1. The treatment of a
disorder, and the identity of the disorder, is not the invention being
claimed.
The claimed method comprises two steps: (1) contacting cells with an effective
amount of a compound of formula (I); and (2) determining whether the level of
acetylated histones in the treated cells is higher than in untreated cells under the
same conditions. As explained by the examiner (Answer, page 5), “[c]onstruing
the claims in light of appellant [sic] arguments would lead the [s]killed [a]rtisan to
understand and practice the instant method as a screening method, i.e., a
method of assaying compounds of formula I to measure their histone
deacetylation inhibitory effect.” In contrast, the examiner finds (id.), “[r]eading
the claim in its entirety and including the phrase ‘thereby treating one or more
disorders’ in the claim language, leads the skilled artisan to understand and
practice the instant invention as a method of treating histone deacetylase
mediated disorders in general and cancer (the elected disorder), in particular.”
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