Appeal No. 2001-0421
Application 08/926,835
of reaction conditions including pressure, temperature,
concentration and molar ratio. Nevertheless, the majority holds
that the appealed claims are indefinite under the second
paragraph of section 112. The majority has given one and only
one reasonably specific basis for this holding which is the fact
that the claims do not actively and positively recite the steps
which result in a reaction mixture containing the recited
ingredients including the acid ingredient in particular5. As
5 At this point, it is necessary to express a caveat. As
support for their section 112 position, the majority panel
members have focused on the fact that the appealed claims do not
actively and positively recite the steps which result in a
reaction mixture which “additionally contains an acid.”
Independent claims 1 and 36. Nevertheless, the language of the
majority opinion is such that other aspects of the appealed
claims may well be considered by the majority panel members to
raise indefiniteness issues. For example, at no less than 3
different locations in their opinion, the majority panel members
indicate that the independent claim phrase “the reaction mixture”
lacks antecedent basis. Slip Op., at pages 6, 7 and 9. If the
majority believes this phrase offends the second paragraph of
section 112, they are in error as no one with ordinary skill in
this art would consider the phrase to be indefinite. As an
additional example, the majority expressly states that “[t]he
claims should actively recite the steps of adding each of the
individual components of the reaction mixture.” Slip Op., at
pages 8-9; emphasis supplied. Thus, although the majority
opinion focuses on the acid ingredient specifically, this express
statement reflects that the majority panel members will maintain
their indefiniteness position unless the appealed claims are
amended to actively recite the steps of adding each and every one
of the individual ingredients of the here claimed reaction
mixture.
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