Appeal No. 2005-0548
Application No. 09/839,164
Discussion
Rejection I
The examiner argues that claims 30-32 are indefinite in the recitation of milligram
amounts of the alpha chain and beta chain. The examiner contends that “a composition
comprises a concentration of a particular item such as grams/liter, for example.”
Answer, pp. 2-3.
In response, the appellants argue that the claims are not ambiguous, they simply
read on a composition in which “0.1 mg to 6 g of alpha and/or beta globin is present
regardless of its concentration in the composition.” Brief, p. 3.
Analysis of the claims begins with the determination of whether they [the claims]
satisfy the requirements of the second paragraph of § 112. In re Moore, 439 F.2d 1232,
1235, 169 USPQ 236, 238 (CCPA 1971). In Moore, the court stated:
. . . it should be realized that when the first paragraph speaks of “the invention”, it
can only be referring to that invention which the applicant wishes to have
protected by the patent grant, i.e, the claimed invention. For this reason the
claims must be analyzed first in order to determine exactly what subject matter
they encompass. The subject matter there set out must be presumed, in the
absence of evidence to the contrary, to be that “which the applicant regards as
his invention.” (emphasis added).
This first inquiry therefore is merely to determine whether the claims do, in
fact, set out and circumscribe a particular area with a reasonable degree of
precision and particularity. It is here where the definiteness of the language
employed 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 level of skill in the pertinent art.
4
Page: Previous 1 2 3 4 5 6 7 8 9 10 Next
Last modified: November 3, 2007