Appeal No. 95-1215
Application No. 07/750,777
To establish indefiniteness under § 112, the examiner has to
establish, in the first instance, that the scope of the
appealed claims could not be ascertained by one of ordinary
skill in the art, when the specifically criticized language is
read in light of the teachings of the prior art and the
supporting specification. In re Kroekel, 504 F.2d 1143, 183
USPQ 619 (CCPA 1974); In re Moore, 439 F.2d 1232, 169 USPQ 236
(CCPA 1971).
Regarding claims 12, 14 and 17, the examiner argues (see
Answer, pages 2 and 3) that:
In claims 14, 17 “or” is indefinite in a
Markush group using “selected from . . .”
language.
In claim 14 “(meth-) acrylamide” and
“acrylic” ester” are indefinite; are polymers of
these monomers intended?
In claim 12 “at least one” is indefinite.
The examiner, however, does not point out why these criticized
words would have rendered the scope of the appealed claims
unascertainable, particularly when they are read in light of
pages 3 and 6 through 14 of the supporting specification. The
examiner simply has not met his burden. Thus, we reverse the
examiner’s decision to reject claims 12, 14 and 17 under
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