Appeal No. 1998-0653 7
Application No. 08/282,278
that a moiety or term may be embraced by more than one member of a group recited in
the claim does not necessarily render the scope of the claim unclear.
Rather, “[t]he legal standard for definiteness [under the second paragraph of 35
U.S.C. § 112] is whether a claim reasonably apprises those of [ordinary] skill in the art
of its scope.” In re Warmerdam, 33 F.3d 1354, 1361, 31 USPQ2d 1754, 1759
(Fed. Cir. 1994). The inquiry is to determine whether the claim sets out and
circumscribes a particular area with a reasonable degree of precision and particularity.
The definiteness of the language employed in a claim must be analyzed not in a vacuum,
but in light of the teachings of the particular application. In re Moore, 439 F.2d 1232,
1235, 169 USPQ 236, 238 (CCPA 1971).
On the facts before us, the specification and original claims contain the descriptive
language, “wherein R4, R5, R6, R7, R8, R9, R10, and R11 are each selected from the group
consisting essentially of . . . a second stable organic radical, a heterocyclic group,
halogen, a second nitrogen-substituted group and a second nitrogen-substituted ring
compound.” See specification, page 4 lines 18-26. As to the scope of each term, and
their possible overlap with other terms in the group, we find the terms to be usual and
customary within the art and not indefinite.
The second ground of rejection is directed to the claimed language “selected from
the group consisting essentially of” which appears three times in claim 1 and in the
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