Appeal No. 2001-0421
Application 08/926,835
page 8. It is their view that “[t]he claims should actively
recite the steps of adding each of the individual components of
the reaction mixture.” Id., pages 8-9. In expressing this view,
the majority refers to Ex parte Erlich, 3 USPQ2d 1011 (Bd. Pat.
App. & Int. 1986), Anglo-American Extrusion Co. v. Ladd, 226 F.
Supp. 295, 300, 140 USPQ 304, 308 (D.D.C. 1964) and the Manual of
Patent Examining Procedure (MPEP) § 2173.05(q)(8th ed., Aug.
2001).
These citations do not support the majority’s new rejection
under the second paragraph of section 112.
The majority expressly characterizes Ex parte Erlich (which
was authored by one of the majority panel members) as non-
precedential. By its very nature, a non-precedential opinion
does not and cannot provide legal support for this rejection. In
addition, the indefiniteness issues discussed in Erlich and in
MPEP § 2173.05(q) involve claims directed to processes for using
a material without reciting any steps as to how the use is
actually practiced. Contrastingly, the appealed claims are
directed to processes for reacting an imine and hydrogen with
specific and considerable information as to how this reaction is
actually practiced. While possibly applicable to “process of
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