Appeal No. 2005-0412 Page 3
Application No. 09/682,968
DISCUSSION
We note that the examiner first raises the issue of whether the claimed
invention is patentable pursuant to 35 U.S.C. § 112, first paragraph. However,
we point out that the first inquiry should be whether the claims “set out and
circumscribe a particular area with a reasonable degree of precision and
particularity.” In re Moore, 439 F.2d 1232, 1235, 169 USPQ 236, 238 (CCPA
1971). Since it is erroneous to analyze claims based on “speculation as to the
meaning of terms employed and assumptions as to the scope of the claims” (In
re Steele, 305 F.2d 859, 862, 134 USPQ 292, 295 (CCPA 1962)), we begin by
addressing the issues raised under § 112, second paragraph.
THE REJECTION UNDER 35 U.S.C. § 112, SECOND PARAGRAPH:
As we understand appellants’ claim grouping (Brief, page 2), claims 1, 2, 4
and 5 (Group I) stand or fall together, and claim 3 (Group II) stands or falls
alone.2 The examiner is unclear as to the meaning of the phrase “an effector for
reducing enzymatic activity of DPIV and DPIV analogous enzymes” as it appears
in appellants’ claimed invention. Answer, page 6. More particularly, the issue is
- what is an “effector” according to appellants’ claimed invention. According to
appellants (Brief, page 6), the term “effector” is a “definite term in the art.” In
support of this position appellants direct attention to page 63 of Darnell, wherein
the term “effector” is defined as “[m]olecules that bind to enzymes and increase
or decrease their activities.” Therefore, based on the art-recognized definition of
the term “effector,” we understand that an “effector” according to appellants’
2 We recognize appellants’ separate argument of claim 3, as it appears on page 7 of the Brief.
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