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 3Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 NextLast modified: November 3, 2007