Appeal No. 2006-1330
Application No. 10/212,927
We have thoroughly reviewed the respective positions
advanced by appellants and the examiner. In so doing, we find
that the examiner’s Section 112, second paragraph rejection is
not sustainable. However, we fully concur with the examiner that
the claimed subject matter is unpatentable under Section 102 and
Section 103 over the applied reference. Accordingly, we will
sustain the Examiner’s Section 102 and Section 103 rejections for
the reasons set forth in the answer.
We consider first the examiner’s Section 112 rejection of
claims 5, 14 and 21. According to the examiner, the claim
language “thiazole derivatives” is indefinite since one of
ordinary skill in the art “would not know which compounds are
considered to be derivatives of thiazole and which thiazole
derivatives would be effective in appellants’ formulations, since
these are no examples of said derivatives can be found [sic] in
the specification” (page 3 of answer, penultimate paragraph).
It is well settled that claim language is not to be read in
a vacuum but in light of the specification as it would be
interpreted by one of ordinary skill in the art. In re Sneed,
710 F.2d 1544, 1548, 218 USPQ 385, 388 (Fed. Cir. 1983); In re
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