Appeal No. 2003-2146 Page 5
Application No. 09/546,143
rely on the table of contents to chapter 7 of Green3 to demonstrate that “‘amino
protecting groups’ are well-known and exemplified by many members, all of
which are within the skill of the art of organic synthesis.” We find it noteworthy to
mention that the title of this chapter (chapter 7) of Green is “Protection for The
Amino Group.”
In response, the examiner argues (Answer, page 7, emphasis removed),
“it is still unclear whether the scope of ‘amino protecting group’ includes groups
cited by Green, or goes beyond that.” The examiner makes a similar argument
(id.) with respect to appellants’ assertion (Brief, page 4) that other patents have
issued “with the term ‘amino protecting groups’ in the claims.” On consideration
of the record before us, we agree with appellants that the phrase “amino
protecting group” is a term of art. Accordingly, we disagree with the examiner’s
conclusion that the phrase is indefinite to those of skill in the art.
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
3 Theodora W. Greene (Green), Protective Groups in Organic Synthesis, pp. 218-22, Table of
Contents to Chapter 7, “Protection for The Amino Group” (John Wiley and Sons, 1981).
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