Appeal No. 95-1827
Application 07/816,157
“[t]he material is of an impositive [sic] nature, and is not
considered a permanent element of the apparatus structure.”,
citing In re Rishoi (id.). 3
However, the legal standard for definiteness under the
second paragraph of § 112 is not whether the claims recite a
material within an apparatus or whether the material is of an
“impositive” or transient nature. “The legal standard for
definiteness is whether a claim reasonably apprises those of
skill in the art of its scope.” In re Warmerdam, 33 F.3d
1354, 1361, 31 USPQ2d 1754, 1759 (Fed. Cir. 1994).
The examiner bears the initial burden, on review of the
prior art or on any other ground, of presenting a prima facie
case of unpatentability. In re Oetiker, 977 F.2d 1443, 1445,
24 USPQ2d 1443, 1444 (Fed. Cir. 1992). There has been no
showing on this record by the examiner that one skilled in the
art would have any particular difficulty in determining
whether a sterilizer apparatus with an electrically conductive
medium containing a certain amount of biocide and neutralizer
is or is not within the scope of appealed claim 23. The
3 197 F.2d 342, 345, 94 USPQ 71, 73 (CCPA 1952).
5
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