Appeal No. 1999-2530
Application 08/882,809
claim the subject matter which applicants regard as the invention, and under 35 U.S.C. § 103 as being
unpatentable over Burton et al. (Burton) in view of White et al. (White).2
The ground of rejection under § 112, second paragraph, is explained with respect to only claims
9 through 16 even though stated to include all of the appealed claims (answer, pages 3-4). The
examiner holds the rejection to include claim 1, apparently because claims 9 through 16 depended
directly or ultimately thereon, as well as claims 2 through 8 and 17 through 20 because they “depend
from claim 1 in some manner” (id., page 6) and then states that the rejection is moot with respect to
claims 17 through 20 (id., page 7). In any event, the examiner’s contention with respect to claims 9
through 16 is that “it is unclear if ‘a second epoxy[’] (see line 4) and ‘a second epoxy resin’ (see line 9)
are the same” (id.). In making out a prima facie case of non-compliance with this statutory provision3
on the basis that the claims are indefinite for failing to particularly point out and distinctly claim the
subject matter which appellants regard as the invention, the examiner must establish that when the
language of the appealed claims is considered as a whole as well as in view of the specification as it
would be interpreted by one of ordinary skill in the art, the claims in fact fail to set out and circumscribe
a particular area with a reasonable degree of precision and particularity. In re Moore, 439 F.2d 1232,
1235, 169 USPQ 236, 238 (CCPA 1971). We find ourselves in agreement with appellants, that when
considered in light of the written description in the specification as interpreted by one of ordinary skill in
this art, see, e.g., In re Morris, 127 F.3d 1048, 1054-55, 44 USPQ2d 1023, 1027 (Fed. Cir. 1997),
the plain language of appealed claim 1 clearly specifies that there are two separate additions of epoxy
resin, the first, that is, “a first . . . epoxy resin,” in step (b), and a second, that is, “a second epoxy resin,”
in step (c). The same interpretation holds for claims 2 through 8. Thus, claims 9 through 16, which
sequentially depend on claims 1 through 8, certainly comply with the requirements of this statutory
provision and, therefore, we reverse this ground of rejection.
2 Answer, pages 3-6.
3 The initial burden of establishing a prima facie case on any ground under the second paragraph of §
112 rests with the Examiner. See In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444
(Fed. Cir. 1992), citing In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984)
(“As discussed in In re Piasecki, the examiner bears the initial burden, on review of the prior art or on
any other ground, of presenting a prima facie case of unpatentability.”).
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