Appeal No. 96-0928
Application 08/310,971
With regard to the rejection under § 112, second paragraph,
the examiner contends that the Markush groups recited in claims
5, 14 and 19 render the claims indefinite because the materials
set forth in each group do not belong to a recognized physical or
chemical class or to an art-recognized class. Even if this is
assumed arguendo to be the case, the claims are not necessarily
indefinite. See Manual of Patent Examining Procedure (4th ed.,
Rev. 2, July 1996), § 2173.05(h).
In the final analysis, claims are considered to be definite
as required by the second paragraph of § 112 when they define the
metes and bounds of the claimed invention with a reasonable
degree of precision. In re Venezia, 530 F.2d 956, 958, 189 USPQ
149, 151 (CCPA 1976). In the present case, the materials in each
Markush group are defined with a reasonable degree of precision
and are sufficiently related to make the claim language
understandable. We will therefore reverse the rejection of
claims 5, 14 and 19 under the second paragraph of § 112.
The examiner’s decision rejecting appealed claims 1 through
19 is reversed.
REVERSED
HARRISON E. McCANDLISH )
Administrative Patent Judge )
)
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