Appeal No. 2006-1245 Page 6
Application No. 10/294,106
Appellants argue that the claim language directs the practitioner to administer the
claimed compounds to the subjects of the claims. Brief, page 16. Appellants further
argue that specification discloses the administration of individual compounds obtained
from the plant, as well as combinations thereof. Id., at pages 16 and 17. Appellants
further urge that the language “in a system containing the enzymes” encompasses both
in vivo and in vitro systems, which are both supported by the disclosure in the
specification.
To the extent they argue that the claims are definite, we agree with Appellants.
Specifically, 35 U.S.C. § 112, second paragraph, requires only that one of skill in the art,
reading the claims in light of the specification, be able to clearly distinguish between
subject matter encompassed by the claims, and subject matter not encompassed by the
claims. See Miles Laboratories Inc. v. Shandon Inc., 997 F.2d 870, 875, 27 USPQ2d
1123, 1126 (Fed. Cir. 1993) (“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.”).
Thus, “[t]he purpose of claims is not to explain the technology or how it works, but to
state the legal boundaries of the patent grant. A claim is not ‘indefinite’ simply because
it is hard to understand when viewed without benefit of the specification.” S3
Incorporated v. NVidia Corp., 259 F.3d 1364, 1369, 59 USPQ2d 1745, 1748 (Fed. Cir.
2001).
We acknowledge that the language “providing” might not be the most commonly
used terminology in claims directed to in vivo treatment methods. However, all of the
claims require the inhibitory withanolides to be “provid[ed] . . . so as to produce the
COX[-]2 inhibition.” In our view, given the dependent claims specifically directed to in
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