Appeal No. 93-4332
Application 07/707,717
contain overlapping subject matter. Clearly then, the subject
matter of patent claim 21 cannot be said to be the same as the
subject matter defined by application claim 1. It is apparent
therefore that patent claim 21 and the claims dependent therefrom
can be infringed without infringing any of application claims 1
through 15.
We conclude therefore that under 35 U.S.C. § 101, the
subject matter defined by patent claims 21 through 25 is not the
same as the subject matter defined by application claims 1
through 15. Accordingly, we reverse the decision of the examiner
to reject the claims under 35 U.S.C. § 101 as claiming the same
invention as claims 21 through 25 of US patent No. 5,086,139.
The Rejection Under 35 U.S.C. § 112
Concerning the indefiniteness of the claims, the examiner
contends that “either the bisimide is represented by the claimed
formula or the bisimide is not represented by the claimed
formula” (emphasis in the original; answer, page 4). It is well
settled that the examiner has the initial burden to prove that
the claims are indefinite. The examiner has attempted to
improperly shift that burden to appellant. That, the examiner
cannot do. The examiner has failed to provide any evidence that
bisimides other than “a bisimide of an unsaturated dicarboxylic
acid” are characterized by formula
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