Appeal 2007-1434
Application 10/610,718
is not precluded by the necessity for some experimentation such as routine
screening.”).” Warner-Lambert Company v Teva Pharmaceuticals USA, Inc., 418
F.3d 1326, 1337, 75 USPQ2d 1865, 1872 (Fed. Cir. 2005).
With regard to the second paragraph requirement for “particularly
pointing out and distinctly claiming the subject matter which the applicant
regards as his invention,” it has been stated that the “essence of that
requirement is that the language of the claims must make it clear what subject
matter they encompass.” In re Hammack, 427 F.2d 1378, 1382, 166 USPQ
204, 208 (CCPA 1970). This has been frequently stated in a shortened form as
a requirement that the claims set forth the "metes and bounds" of their coverage.
See, merely for example, In re Venezia, 530 F.2d 956, 958, 189 USPQ 149, 151
(CCPA 1976); In re Goffe, 526 F.2d 1393, 1397, 188 USPQ 131, 135 (CCPA
1975); In re Watson, 517 F.2d 465, 477, 186 USPQ 11, 20 (CCPA 1975); In re
Knowlton, 481 F.2d 1357, 1366, 178 USPQ 486, 492 (CCPA 1973). This
requirement has usually been viewed from the perspective of a potential
infringer, “so that they may more readily and accurately determine the
boundaries of protection involved and evaluate the possibility of infringement
and dominance.” Hammack, 427 F.2d at 1382, 166 USPQ at 208.
ANALYSIS
As our findings of fact show, we are unable to credit the Examiner with
establishing the lack of novelty of the claims on appeal to a preponderance of the
evidence. Therefore, the anticipation rejections are reversed.
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