Appeal No. 2001-0421
Application 08/926,835
each of the individual components of the reaction mixture. If
appellants intend to claim addition of an exogenous acid as
opposed to in-situ formation of an acid, then the claims should
include the step of adding the acid to the reaction mixture.
Failure to use positive steps in claim 1 adds needless ambiguity
to the claim. For example, as noted, the claim does not provide
antecedent support for the phrase “the reaction mixture.”
It is well established that "definiteness of [claim]
language employed must be analyzed, not in a vacuum, but always
in light of the prior art and of the particular application
disclosure as it would be interpreted by one possessing the
ordinary level of skill in the pertinent art." In re Moore, 439
F.2d 1232, 1235, 169 USPQ 236, 238 (CCPA 1971). Section 112,
second paragraph, requires that: (1) the claims set forth what
"the applicant regards as his invention" and (2) the claims be
sufficiently "definite." See Allen Eng’g Corp. v. Bartell Indus.
Inc., 299 F.3d 1336, 1348, 63 USPQ2d 1769, 1775 (Fed. Cir. 2002)
(quoting Solomon v. Kimberly-Clark Corp., 216 F.3d 1372, 1377, 55
steps but by an indefinite result” was unpatentable under 35
U.S.C. § 112, second paragraph). See generally MPEP § 2173.05(q)
(8th ed., Aug. 2001).
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