Appeal No. 95-1183
Application No. 07/991,693
the most part, the examiner’s indefiniteness position is based
upon her concern that the appealed claim language, including the
language “desired substance” in claim 1, “agent” in claim 5 and
“organic compound” in claim 6, is “unduly broad” (e.g., see pages
5 and 6 of the Answer). It is well settled, however, that
breadth is not indefiniteness. In re Gardner, 427 F.2d 786, 788,
166 USPQ 138, 140 (CCPA 1970). In addition, we discern no legal
or scientific basis for the examiner’s belief that claim 7 is
indefinite because the compounds thereof are described by a
common name rather than by, for example, a chemical structure.
In short, when the claim language is properly read in light
of the specification as it would be interpreted by one of
ordinary skill in the art (In re Moore, id.), it is clear that
the definiteness and particularity requirements in the second
paragraph of § 112 are satisfied. It follows that we cannot
sustain the examiner’s § 112, second paragraph, rejection of
claims 1 through 20.
The § 112, First Paragraph, Rejection
In essence, this rejection is based upon the examiner’s
belief that “language is so broad that it causes claim to have a
potential scope of protection beyond that which is justified by
specification disclosure” (Answer, page 5). It has been long
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