Appeal No. 1998-0653 5
Application No. 08/282,278
The Rejections under 35 U.S.C. § 112
With respect to the first rejection, although the rejection has been entered under
both the first and second paragraphs of the statute, we find that the rejection of record as
stated in the Answer is directed to the scope and definiteness of the claim. We fail to
find any portion of the rejection directed to enablement or lack of a written description
requirement as argued in part by the appellants. The principal issue argued by the
examiner is directed to the scope of the claimed subject matter, i.e., breadth.
Specifically, the examiner argues that the term “stable organic radical” is the broadest
member present. See Answer, page 3. In addition, the examiner further argues that each
of the groups encompasses other groups and is not mutually exclusive. See Answer,
pages 4 to 6. As to the issue of breadth, it is well settled that breadth does not necessarily
render a claim indefinite. In re Gardner, 427 F.2d 786, 788, 166 USPQ 138, 140
(CCPA 1970) (“Breadth is not indefiniteness”); In re Borkowski, 422 F.2d 904, 909,
164 USPQ 642, 645-46 (CCPA 1970). Accordingly, the fact that one or more
moieties or terms found in the claimed subject matter may be broadly defined does not
in and of itself render them indefinite. In our view, the person having ordinary skill in
the art would understand what is covered by each of the moieties and terms present in
the claimed subject matter.
The other argument presented by the examiner is that the moieties and terms that
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