Appeal No. 2005-0908 Page 10
Application No. 09/261,329
“The test for definiteness is whether one skilled in the art would
understand the bounds of the claim when read in light of the specification.” Miles
Laboratories, Inc. v. Shandon, Inc., 997 F.2d 870, 875, 27 USPQ2d 1123, 1126
(Fed. Cir. 1993). Claims are in compliance with 35 U.S.C. § 112, second
paragraph, if “the claims, read in light of the specification, reasonably apprise
those skilled in the art and are as precise as the subject matter permits.”
Hybritech, Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 1385, 231 USPQ
81, 94-95 (Fed. Cir. 1987).
Here, it is clear from the rejection that the examiner understands the
bounds of the claim and understands which amino acid is being substituted.
Moreover, as also noted by the examiner, the numbering system is explicitly set
forth in Table 1 of the specification. Thus, one skilled in the art would understand
the bounds of the claims, and the rejection is reversed.
The rejection further stated that “claim 206 is further confusing as reciting
positions 21a, 49a, 49b, 95j and 150b. Neither SEQ ID NO: nor SEQ ID NOI:5
has these positions (Table 1).” Examiner’s Answer, page 7.
We initially note that appears to be a new ground of rejection that was not
designated as such, and as such, was improper. See 37 CFR § 41.39 (effective
September 13, 2004). Be that as it may, however, we agree with appellants that
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