Appeal No. 95-0808
Application 08/048,866
(CCPA 1968).
For the above reasons, we conclude, based on the
preponderance of the evidence of record, that appellants’
claimed
invention would have been obvious to one of ordinary skill in
the art within the meaning of 35 U.S.C. § 103.
Rejections under 35 U.S.C. § 112,
first and second paragraphs
A claim complies with 35 U.S.C. § 112, second paragraph,
if the claim language is as precise as the subject matter
permits and if, when read in light of the specification, the
claim reasonably apprises those skilled in the art both of the
utilization and scope of the invention. See Shatterproof
Glass v. Libby-Owens Ford Co., 758 F.2d 613, 624, 225 USPQ
634, 641 (Fed. Cir. 1985).
The examiner argues that claim 1 indicates that the
formula recited therein is that of a partially hydrolyzed
alkoxide and that the formula therefore should contain at
least one hydroxyl group (answer, page 3). This argument is
not well taken because in view of appellants’ specification
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