Appeal No. 95-2718
Application 07/914,852
Appealed claims 1-31 stand rejected under 35 U.S.C.
§ 112, second paragraph. Claims 1-4, 6-11, 13-18, 21, 23-27,
29 and 30 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Moser.
We consider first the rejection of the appealed claims
under 35 U.S.C. § 112, second paragraph. It is the examiner’s
position that the claim 1 language “suitable carrier solvent”
and “a desired thickness” are indefinite. However, we fully
concur with appellants that when the claim language is read in
light of the relevant portions of the present specification,
as it must be, one of ordinary skill in the art would readily
understand which solvents are suitable and what is a desired
thickness. We note that the Examiner’s Answer offers no
response to appellants’ argument that one of ordinary skill in
the art would understand the meaning of the claim language
when such is read in light of the present specification.
Likewise, the examiner has not established a prima facie case
of indefiniteness of the claim language “metallic oxide
precursor” or the claim 26 language “solid-state precursor.”
Accordingly, we will not sustain the examiner’s rejection of
the appealed claims under 35 U.S.C. § 112, second paragraph.
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