Appeal 2007-0693
Application 10/188,519
1 21. Appellants have not demonstrated results commensurate in
2 scope with the claims.
3
4 PRINCIPLES OF LAW
5 “[T]he examiner bears the initial burden, on review of the prior art or
6 any other ground, of presenting a prima facie case of unpatentability.” In re
7 Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992).
8 To satisfy the written description requirement of 35 U.S.C. § 112, ¶1,
9 the disclosure of the application as originally filed must reasonably convey
10 to any person skilled in the relevant art that the applicants, as of the filing
11 date of the original application, had possession of the claimed invention. In
12 re Alton, 76 F.3d 1168, 1172, 37 USPQ2d 1578, 1581 (Fed. Cir. 1996); In re
13 Kaslow, 707 F.2d 1366, 1375, 217 USPQ 1089, 1096 (Fed. Cir. 1983).
14 A claim is definite, and thus complies with 35 U.S.C. § 112, ¶2, if it
15 would have reasonably apprised one skilled in the relevant art of its scope.
16 Amgen, Inc. v. Chugai Pharmaceutical Co., Ltd., 927 F.2d 1200, 1217, 18
17 USPQ2d 1016, 1030 (Fed. Cir. 1991). Claim definiteness is not analyzed
18 “in a vacuum, but always in light of the teachings of the prior art and of the
19 particular application disclosure as it would be interpreted by one possessing
20 the ordinary level of skill in the pertinent art.” In re Moore, 439 F.2d 1232,
21 1235, 169 USPQ 236, 238 (CCPA 1971). That is, a claim complies with the
22 second paragraph of Section 112 if, when read in light of the specification, it
23 would have reasonably apprised those skilled in the relevant art of the scope
24 of the invention. Hybritech Inc. v. Monoclonal Antibodies, Inc., 802 F.2d
25 1367, 1385, 231 USPQ 81, 94 (Fed. Cir. 1986).
10
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