Appeal No. 2003-2147
Application No. 09/392,243
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).
The examiner argues that claim 42 is confusing because “the claim initially
recites addition of a peroxide-containing compound to a composition, but then recites
that the added product must become undetectable when the amount of added product
is measured. It is therefore unclear how much peroxide-containing product can be
added, if any.” Answer, page 3.
Appellants argue that claim 42 is not indefinite. Brief, page 38. Appellants argue
that
[i]f the concentration of the peroxide containing compound remaining in
the mucosa product, when determined using KMnO4 titration, is not
“undetectable” (i.e. is “detectable”) or if the particular subject matter does
not entail “mixing the peroxide containing compound and the mucosa
tissue to form a mucosa product” as claim 42 requires, then the person
knows the particular subject matter falls outside the literal scope of claim
3
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 Next
Last modified: November 3, 2007