Appeal No. 1998-0653 8
Application No. 08/282,278
specification, each occurrence in the specification respectively having the same language
presented in the claimed subject matter. Id. The examiner rejects the terminology
“selected from the group consisting essentially of,“ for being an improper Markush and
indefinite. In our view, the terminology used is not that of a Markush group. It is
however, one of many alternative expressions that are permitted if they present no
uncertainty or ambiguity with respect to the question of scope and clarity of the claims.
See M.P.E.P. § 2173.05(h) Seventh Ed., Revision 1, Feb. 2000. Accordingly, the issue
before us is whether the terminology is definite within the meaning of the second
paragraph of the statute. On this record, we find nothing in the language which is
inconsistent with understanding the metes and bounds of the language present in the
aforesaid claims. It is the intent of the appellants that the groupings of the claimed
subject matter are open ended to the extent that it includes the specific members of the
grouping plus other members which do not affect the basic and novel photochromic
characteristics of the claimed compound. See Brief, page 55. The intent is evident from
the onset as we found supra that both the original specification and claims are directed to
the specific language “selected from the group consisting essentially of.” Accordingly,
based on the very specific fact situation and record before us, we will not sustain this
portion of the rejection.
The third ground of rejection is directed to the definition of “hydrogen” as a
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