Appeal No. 2001-0851
Application No. 09/042,735
one possessing an ordinary level of skill in the pertinent art.
In re Moore, 439 F.2d 1232, 1235, 169 USPQ 236, 238 (CCPA 1971).
Under this analysis, claims which appear indefinite when read in
a vacuum may become quite definite when read in light of the
specification disclosure or prior art teachings. Id., n.2.
This last mentioned point is particularly relevant to the
issue under review. This is because, in our opinion, the
examiner’s finding of claim indefiniteness is improperly based
upon an analysis of the appealed claims in a vacuum. It is clear
to us that, when properly analyzed in light of the appellant’s
specification disclosure, these claims set out and circumscribe a
particular area with a reasonable degree of precision as required
by the second paragraph of Section 112. Id.
Specifically, the appealed claims are not rendered
indefinite as the examiner believes merely because the two diol
reactants recited in the independent claims are not mutually
exclusive. Upon reading these claims in light of the appellant’s
specification disclosure (e.g., see specification pages 3 and 4),
one with ordinary skill in this art would readily appreciate that
the compounds encompassed by these respective diols may, but need
not, be the same. For analogous reasons, claim 40 also complies
with the second paragraph of Section 112 contrary to the
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