Appeal No. 94-2894
Application 07/725,222
Rejections Under 35 U.S.C. § 112, First and Second Paragraphs
The examiner considers the term "lower alkanol" as used in the claims on appeal to
be indefinite and not enabled. The only reason given in support of the examiner's position
is that the only lower alkanol exemplified in the specification of this application is ethanol. It
appears to be the examiner's position that the claims on appeal must be limited to the
presence of ethanol.
In regard to the rejection made under the first paragraph of this section of the
statute, the examiner states at page 3 of the Examiner's Answer that "the claims are not
commensurate in scope with that which is disclosed." This determination is clearly
erroneous. The specification of this application clearly and unambiguously "discloses" that
the present invention involves the use of lower alkanols. See, e.g., the paragraph bridging
pages 4-5 of the specification. Suffice it to say that the examiner has failed to articulate
any reason why one skilled in the art would not be able to make and use the claimed
invention set forth in the claims on appeal.
Turning to the rejection as it is premised under the second paragraph of this section
of the statute, the examiner's position as set forth at page 3 of the Examiner's Answer is
that "lower" is a relative term. The short answer to the examiner's position is, So what? It
has long been held that the use of relative terms in a patent claim does not per se give rise
to a rejection under 35 U.S.C. § 112, second paragraph. In re Mattison, 509 F.2d 563,
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