Appeal No. 1996-2308
Application 08/179,008
catalyst;[3]
The examiner argues that in (ii), the di- or tri-
chlorobenzolychloride, base and catalyst produce a final
product, whereas in (iii) they produce an intermediate rather
than a final product (answer, page 3). Thus, the examiner
argues, there must be some difference between the treatments
with the di- or tri-chlorobenzolychloride, base and catalyst
in (ii) and (iii), and because the claims fail to particularly
point out this distinction, a rejection under 35 U.S.C. § 112,
second paragraph, is proper (answer, pages 3-4).
The examiner’s argument is deficient in that the examiner
has not explained why the language in either (ii) or (iii), as
it would have been interpreted by one of ordinary skill in the
art in light of appellants’ specification and the prior art,
fails to set out and circumscribe a particular area with a
3 There is no issue in this case regarding treatment with
“(v) a di- or tri-chlorobenzoyl chloride and a metal hydride”
as recited in each of claims 1 and 6.
4
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