Appeal No. 1998-0139
Application No. 08/503,320
(CCPA 1971). The purpose of the second paragraph of Section 112 is to basically
insure an adequate notification of the metes and bounds of what is being claimed. See
In re Hammack, 427 F.2d 1378, 1382, 166 USPQ 204, 208 (CCPA 1970).
The Examiner has rejected claims 1 to 20 as unpatentable under 35 U.S.C. § 112,
second paragraph as indefinite.
According to the Examiner, the claims are indefinite because “it is unclear what
is meant by the alloy designations.” (Answer, p. 4). The Examiner also states ‘[i]t is
clear that the appellant is describing the alloy compositions in terms of atomic
percentages of Nd or of Nd and Gd in the reproducing layers in the respective
appropriate claims. However, it is unclear whether the remaining portion of the alloy
composition formula is to be interpreted in terms of atomic composition. (Answer, p.
10).
We determine that the Examiner has not met the initial burden by failing to
present any reasons why one of ordinary skill in the art would not be appraised of the
scope of the claims on appeal. The Examiner acknowledges there is no requirement that
the recording layer and reproducing layer contain the same amounts of Tb, Fe, Co and
Cr. (Suppl. Answer, p. 2). The component composition of the alloy is described by the
formula. The Examiner has not identified a basis for questioning the relative ratios of
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