Appeal No. 95-3759
Application 08/145,118
Opinion
We have carefully reviewed the respective positions presented by appellant and the examiner.
In so doing, we find ourselves in agreement with appellant that the applied prior art fails to establish
the prima facie obviousness of the claimed subject matter and that the claims are not indefinite under
the second paragraph of 35 U.S.C. § 112. Accordingly, we will not sustain any of the examiner's
rejections for essentially those reasons advanced by appellant in the brief and reply brief. We add the
following primarily for emphasis.
The examiner made a new rejection in the answer of claim 1 under the second paragraph of
35 U.S.C. § 112. According to the examiner, it was unclear (i) what is meant by the term “coarse
particles” and (ii) what distinguishes “finely divided toner particles” from “fine particles” and “toner
particles”. In response to this new ground of rejection, appellant pointed to page 4 of the
specification where the terms “coarse” and “fine” are defined. The examiner subsequently withdrew
that portion of the rejection pertaining to the meaning of the term “coarse particles”, but maintained
the rejection with respect to the remaining grounds of the rejection.
The definiteness of claim language must be analyzed, not in a vacuum as the examiner appears
to have done, but always in light of the teachings of the prior art and of the particular application
disclosure as it would be interpreted by one possessing the ordinary level of skill in the pertinent art.
In re Moore, 439 F.2d 1232, 1235, 169 USPQ 236, 238 (CCPA 1971). When so analyzed, we find
that claims satisfy the requirements in the second paragraph of 35 U.S.C. § 112.
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