Appeal No. 2005-2663 Page 6
Application No. 10/140,323
indefinite because said list of G does not list the longest path as required by the
recursive algorithm of claim 4 for determining a list of the longest path.” Examiner’s
Answer, pages 3-4.
The examiner’s concern seems to be that the algorithm set out in claim 6 defines
a variable G to be “the genetic network graph” while the preamble of claim 1 states that
the method “determin[es] . . . genetic interactions in a graph representation of a genetic
network.” The examiner argues that, while “the meaning of the phrase ‘graph
representation of a genetic network’ overlaps somewhat with the meaning of the phrase
‘genetic network graph’[,] . . . [they are not] identical to clearly define the metes and
bounds of the claimed invention.” Examiner’s Answer, page 4.
Appellant argues that “the terms ‘graph representation of a genetic network’ and
‘genetic network graph,’ as they are used in this patent application, are synonymous.
Appellant respectfully submits that persons having ordinary skill in the art would have no
trouble discerning that these two terms mean the same thing.” Appeal Brief, page 8.
We will reverse this rejection. “The definiteness inquiry focuses on whether
those skilled in the art would understand the scope of the claim when the claim is read
in light of the rest of the specification.” Union Pacific Resources Co. v. Chesapeake
Energy Corp., 236 F.3d 684, 692, 57 USPQ2d 1293, 1297 (Fed. Cir. 2001). 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
“strong component” before applying the algorithm that calculates the adjacency list of the network. Page
13.
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