Appeal No. 95-0808
Application 08/048,866
(pages 4-5), it is clear that the recited general formula
refers to the alkoxide before hydrolysis, and that the claim
recites that this alkoxide is partially hydrolyzed.
The examiner argues that appellants’ claim 1 does not
specify the length or molecular weight of the alkyl chain, and
that the claim therefore is meaningless (answer, pages 3 and
5). Claims are analyzed not in a vacuum but, rather, in light
of the application disclosure and the prior art. See In re
Kroekel, 504 F.2d 1143, 1146, 183 USPQ 610, 612 (CCPA 1974);
In re Moore, 439 F.2d 1232, 1235, 169 USPQ 236, 238-39 (CCPA
1971). The examiner’s argument is not persuasive because the
examiner has not explained why, in view of appellants’
specification and the prior art, the meaning of “low molecular
weight alkyl radical” in appellants’ claim 1 would not have
been reasonably clear to one of ordinary skill in the art.
Regarding enablement, a predecessor of our appellate
reviewing court stated in In re Marzocchi, 439 F.2d 220, 223,
169 USPQ 367, 369-70 (CCPA 1971):
[A] specification disclosure which contains a
teaching of the manner and process of making and
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