Appeal No. 95-2233
Application 07/978,014
materials, we reverse the examiner’s rejections. For the reasons
discussed infra, we enter a new ground of rejection of claims 2,
4 through 6, 8, and 9 under 35 USC § 112, second paragraph, as
indefinite.
THE EXAMINER’S REJECTIONS
Claims 2 through 6, 8 and 9 stand rejected under 35 USC
§ 112, second paragraph, as indefinite, in view of the recitation
“quickly dissipate”. According to the examiner, that phrase is
“relative” and “some guidelines of time should be provided to
remove ambiguity and specify this invention over all others”.
See the Examiner’s Answer, page 3, first two paragraphs.
This rejection lacks merit because the claims on appeal, in
relevant part, recite “a binder which will dissipate its binding
action when the granule is immersed in water”. The claims do not
recite “quickly dissipate”. Where, as here, the examiner’s
rejection is predicated on the recitation of a phrase which does
not appear in the claims, the rejection must fall.2
Claims 2 through 6, 8 and 9 stand rejected under 35 USC
§ 103 as unpatentable over the combined disclosures of Feyen,
2 A previous version of claim 2, as amended in Paper No. 3 filed November
4, 1993, recited “quickly dissipate”. The claims on appeal do not.
6
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