Appeal No. 95-3959
Application 08/051,492
Rejection Under 35 U.S.C. § 112, Second Paragraph
The reasons set forth by the examiner at page 4 of the Examiner’s Answer in
support of this rejection are as follows:
The claims fail to particularly point out the claimed method in that they
completely fail to claim the nutritional component of the claimed method.
The claims read on any emulsion of any nutritional value. The claims are
so broad, that they may are [sic] considered non-enabling.
The examiner has confused the definiteness requirement of 35 U.S.C. § 112,
second paragraph, with the enablement requirement of 35 U.S.C. § 112, first
paragraph. As set forth in In re Skoll, 523 F.2d 1392, 1395, 187 USPQ 481, 482-83
(CCPA 1975), the use of a broad term in a claim does not make that claim indefinite.
See also In re Ehrreich, 590 F.2d 902, 906, 200 USPQ 504, 508 (CCPA 1979)
(Rejection “not based on indefiniteness or lack of clarity of claim language, but only on
the alleged lack of agreement with the scope of the specification” is reversed).
The rejection under 35 U.S.C. § 112, second paragraph, is reversed.
Rejection Under 35 U.S.C. § 103
We vacate this rejection since the examiner has refused to make of record the
complete factual basis relied upon in reaching his conclusion of obviousness.
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