Appeal No. 2003-1266
Application No. 09/735,054
The examiner argues as though “essentially free” is per se
indefinite, which is not correct. See In re Marosi, 710 F.2d
799, 802-03, 218 USPQ 289, 292 (Fed. Cir. 1983). The examiner’s
argument is deficient in that it does not provide the required
explanation as to why the claim language, as it would have been
interpreted by one of ordinary skill in the art in light of the
appellants’ specification and the prior art, fails to set out and
circumscribe a particular area with a reasonable degree of
precision and particularity.
The only appearance of “essentially no glycerin” in the
appellants’ originally-filed specification is in claim 1. The
other portions of the originally-filed specification, including
the independent claims other than claim 1 and the examples of the
invention, disclose “no glycerin”. The originally-filed
specification states that “compared to coated gum with low levels
of glycerin in the center, coated gum centers with hydrogenated
starch hydrolysate and no glycerin remains [sic, remain] soft and
provides [sic, provide] improved crunchiness” (page 5, lines 5-
7). Thus, it would have been reasonably clear to one of ordinary
skill in the art that “essentially no glycerin” in the
appellants’ claim 1 means that the gum center includes at most an
amount of glycerin which is sufficiently small that it does not
Page 4
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007