Appeal No. 2006-0102 Page 5
Application No. 09/732,439
Therefore when the claims are read in light of appellants’ specification it
would appear that the claimed transgenic Zea mays plant, which comprises a
DNA segment encoding an enzyme which catalyzes the synthesis of the
osmoprotectant proline, grown under non-stress conditions would express the
enzyme at an increased level relative to a Zea mays plant grown under non-
stress conditions and does not comprise a DNA segment encoding an enzyme
which catalyzes the synthesis of the osmoprotectant proline. As we understand
appellants’ claims when read in light of the appellants’ specification, the same
would be true if both plants were grown under stress conditions – the transgenic
Zea mays plant would express the enzyme at an increased level relative to a Zea
mays plant that does not comprise the DNA segment encoding the enzyme.
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).
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