Appeal 2006-2729
Application 10/193,363
Myers, Surfactant Science and Technology 154 (2nd ed., New York, VCH
Publications, Inc. 1992).
The Examiner advances the following grounds of rejection on appeal:
claims 1 through 19 under 35 U.S.C. § 112, second paragraph, as being
indefinite for failing to particularly point out and distinctly claim the subject
matter which applicant regards as the invention (Answer 6);
claims 1 through 19 under 35 U.S.C. § 112, first paragraph, as failing to
comply with the enablement requirement (id. 3-6); and,
claims 18 and 19 under 35 U.S.C. § 102(b) as anticipated by or, in the
alternative, under 35 U.S.C. § 103(a) as being obvious over Hendrickson (id.
6-8).
Appellants argue the claims in each ground of rejection as a group
(Br. 3, 10, and 11). Indeed, statements with respect to claims 2-5 and 11-13
(Br. 10) constitute recitation of claim limitations and not substantive
argument. Thus, we decide this appeal based on appealed claims 1 and 19 as
representative of the grounds of rejection and Appellants’ groupings of
claims. 37 C.F.R. § 41.37(c)(1)(vii) (2005).
The Examiner contends independent claim 1 does not satisfy the
provisions of § 112, second paragraph, because “[i]t is unclear how . . . [the]
formation of . . . [an] aggregate occurs for each of the diverse species of
claim 10 since the functional material is insoluble in the CO2 and agitation
via stirrer is optional” (Answer 6).
Appellants contend the claims comply with § 112, second paragraph,
because claim 1 specifies “functional material and surfactant interact to form
an aggregated system having a continuous compressed CO2 phase and a
plurality of aggregates comprising surfactant and functional material
molecules of average diameter less than 10 nanometers dispersed therein”
(Br. 11; original emphasis deleted). Appellants argue the claim language
3
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