Appeal No. 2003-1783
Application No. 09/560,472
the interaction between the copolymer and the surface. Brief, page 9. However, the
examiner maintains the argument that there must be a correlation between the
preamble and the body of the claim as to how the reduction in adsorption. Answer,
page 5.
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 “[t]he 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.”).
Furthermore, claim language 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 skill in the pertinent art.” In re Moore, 439
F.2d 1232, 1235, 169 USPQ 236, 238 (CCPA 1971).
We do not agree with the examiner that the failure of claim 5 to recite the way in
which the non-specific adsorption is reduced renders the claim indefinite. The claim
language must be interpreted 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 skill in the pertinent art. We agree with appellants that one possessing the
ordinary skill in the pertinent art would understand that claim 5 requires that the
5
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