Appeal No. 96-3923
Application 08/309,790
indefiniteness 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). Here, the
examiner has not even alleged that one of ordinary skill in
this art would not be reasonably be apprised of the scope of
these claims. Instead, the examiner’s position is bottomed on
the fact that no particular amount or quantity of irritant has
been set forth. Such a criticism, however, goes to the
breadth of the claim and it is well settled that breadth alone
is not to be equated with indefiniteness. See In re Johnson,
558 F.2d 1008, 1016 n.17, 194 USPQ 187, 194 n.17 (CCPA 1977);
In re Miller, 441 F.2d 689, 693, 169 USPQ 597, 600 (CCPA
1971); In re Gardner, 427 F.2d 786, 788, 166 USPQ 138, 140
(CCPA 1970) and Ex parte Scherberich, 201 USPQ 397, 398 (Bd.
App. 1977). Even though a specific amount or quantity of
irritant has not been set forth, we see no reason why one of
ordinary skill in this art would not be reasonably apprised of
the scope of claims 15-28. This being the case, we will not
sustain the rejection of claims 15-28 under 35 U.S.C.
§ 112, second paragraph.
10
Page: Previous 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 Next
Last modified: November 3, 2007