Appeal No. 2006-1615
Application No. 10/311,307
Kaslow, 707 F.2d 1366, 1375, 217 USPQ 1089, 1096 (Fed. Cir. 1983). The applicants, however, do
not have to describe exactly the subject matter claimed. Union Oil Co. of Cal. v. Atlantic Richfield
Co., 208 F.3d 989, 997, 54 USPQ2d 1227, 1232, 1233 (Fed. Cir. 2000); Vas-Cath Inc. v. Mahurkar,
935 F.2d 1555, 1566, 19 USPQ2d 1111, 1119 (Fed. Cir. 1991).
Beginning on page 7 of the brief, appellants explain that the carbonyl or ether group is bound
directly to a carbon atom of the double bond. Appellants refer to parts of the specification. Brief,
pages 7-9. Appellants also provide comments in the Reply Brief, particularly on page 5.
We recognize that the language in the claim is that the carbonyl group or the oxygen atom in
the form of an ether function is “bonded directly to the double bond”. In view of appellants’ position
as presented in the Brief and Reply Brief, we agree with appellants that one skilled in the art would
recognize that this language conveys that the group is bonded directly to the carbon atom of the
double bond.
Hence, for the reasons provided by appellants, we determine that appellants have shown that
the inventors were in possession of the full scope of the invention.
In view of the above, we therefore reverse the 35 U.S.C. § 112, first paragraph rejection.
II. The 35 U.S.C. § 112, Second Paragraph (Indefiniteness) Rejection
The examiner’s position for this rejection is that it is unclear what is meant by the phrase “at
least one C=C double bond capable of free radical polymerization, wherein a carbonyl group or an
oxygen atom in the form of an ether function is bonded directly to the double bond.” Answer, page
4.
The examiner bears the initial burden of presenting a prima facie case of unpatentability,
whether the rejection is based on prior art or any other ground. See In re Oetiker, 977 F.2d
1443,1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). The requirement under 35 U.S.C. § 112,
second paragraph, is only that the claims set out and circumscribe a particular area with a reasonable
degree of precision and particularity. In re Moore, 439 F.2d1232, 1235, 169 USPQ 236, 238 (CCPA
1971). The definiteness of the language employed in the claims must be analyzed, not in a vacuum,
but always in light of the teachings of the prior art and the application disclosure as it would be
4
Page: Previous 1 2 3 4 5 6 Next
Last modified: November 3, 2007