Appeal No. 95-3070
Application 07/907,078
examiner stated that
the terms “pendant functional groups”, “their derivatives” (claim 3, line 2) and “aromatic
amine antioxidant” fail to particularly point out and distinctly claim the invention. One
having ordinary skill in the art would not be able to ascertain the limits and bounds of a
claim containing the above terms. Especially when considered in view of the phrase “which
forms synergistic antioxidant composition” (claim 1, line 2) and the total lack of a definition
as to what constitutes a synergistic antioxidant composition, i.e., 10% improvement, 50%
improvement, 100%improve-ment [sic], or some other, [sic] undefined amount? [sic]
[Answer: p. 7.]
We will not sustain this rejection. The examiner has not explained why one having ordinary skill
in the art would find the expression “which forms synergistic antioxidant composition” indefinite. The term
synergism means the “action of two or more substances ... to achieve an effect of which each is individually
incapable.” Since according to appellants the two claimed antioxidant groups achieve a synergistic effect2
when on the same polymer backbone, the expression could only mean that the two groups combined form
a polymer which has greater antioxidant properties than each group alone on the same polymer backbone.
Thus, we do not find that one having ordinary skill in the art would have found the expression indefinite.
The examiner asserts that the phrases “pendent functional groups,” “their derivatives” and “aromatic amine
antioxidant” are indefinite. The examiner’s reason for objecting to these phrases is a conclusionary. He
has not explained how he arrived at this conclusion, i.e. why a person having ordinary skill in the art would
not be able to ascertain the limits and bounds of the claims containing the objected to phrases.
The legal standard for indefiniteness under the second paragraph of 35 U.S.C. § 112 is whether
The American Heritage Dictionary, Second College Edition, Houghton Mifflin Company, Boston, Mass., page2
1233 (1982).
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