Appeal No. 95-0865
Application 08/08/007,950
Claim 22 is rejected under the second paragraph of 35 U.S.C.
§ 112 as being indefinite. The limitation which is indefinite is
"an acid such as hydrochloric acid ***." The language "such as
hydrochloric acid" does not limit Claim 22 because the claim
otherwise reads on the use of any "acid." Moreover, it is
unclear as to whether applicants claim an "acid" or only
"hydrochloric acid." As a general proposition, we believe that
every word in a claim should be capable of having some limiting
significance. The words "such as hydrochloric acid" would not
appear to limit Claim 22. If an applicant can use the language
"such as hydrochloric acid," it follows that the applicant could
also recite "such as hydrochloric acid" followed by an extensive
list of other acids, all of which would serve to make claims
difficult to understand and/or interpret. Consistent with all of
the paragraphs of 35 U.S.C. § 112, the proper manner to claim
both "acid" and "hydrochloric acid" is to present one claim to
"acid" and another (perhaps dependent) to "hydrochloric acid."
C. Decision
The examiner's prior art rejections are reversed.
Claims 6-9, 11-17, 19-22 and 25 have been rejected pursuant
to 37 CFR § 1.196(b) as being unpatentable under 35 U.S.C. § 103
over the prior art.
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