Ex Parte Rupich et al - Page 12


                Appeal 2007-2236                                                                                   
                Application 10/991,738                                                                             
            1          E.   Discussion                                                                             
            2                                           (1)                                                        
            3                                     Indefiniteness                                                   
            4          A claim which is indefinite is not patentable.  35 U.S.C. § 112, second                     
            5   paragraph.                                                                                         
            6          We have considerable difficulty understanding the meaning of                                
            7   claim 89—from which all other claims depend.                                                       
            8          Accordingly, we reject claims 89-96 as being unpatentable under                             
            9   35 U.S.C. §112, second paragraph, for failing to particularly point and                            
          10    distinctly claim an invention.                                                                     
          11           The first problem we encounter is that the "article" comprises (1) a                        
          12    surface and (2) a solution.  What is described in Fig. 1 and elsewhere in the                      
          13    specification is an article comprising (1) surface and (2) a superconductive                       
          14    layer 14.  How an article comprises a surface and a solution coated on a                           
          15    surface is not at all clear to us.                                                                 
          16           The second problem we encounter is that on the one hand the solution                        
          17    includes "a fluorinated carboxylate salt of an alkaline earth metal" and on                        
          18    the other hand mentions a process step "to form a barium fluoride containing                       
          19    coating …"  To be sure, barium is an alkaline earth metal.  But, so are other                      
          20    elements and the specification reveals that the other can be alkaline earth                        
          21    metals, such as strontium or calcium.  Publication ¶ 0048.  How one starts                         
          22    with strontium or calcium and ends up with barium is not entirely apparent.                        
          23           The third problem relates to the limitation "wherein the solution is                        
          24    capable of being processed …"  In this case, it is not clear to us what this                       
          25    process limitation has to do with the claimed article.  What difference would                      
          26    the processing time make with respect to the claimed "article"?  In other                          

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