Appeal No. 96-0419
Application No. 07/928,063
language is analyzed, not in a vacuum, 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 an ordinary level of skill in
the pertinent art. In re Moore, 439 F.2d 1232, 1235, 169 USPQ 236, 238 (CCPA 1971).
The examiner maintains the term “derivative(s)” is of indeterminate scope (Answer, page 3) and
relies on Petrolite Corp. v. Watson, 113 USPQ 248 (D.C.D.C. 1957) for holding
“‘derivative’ is, ... in that instance, ‘so indefinite as to be meaningless’” (Answer, page 5). However,
we agree with appellant that one of ordinary skill in the art reading the specification at pages 2-3 as well
as the examples in the specification would have been reasonably apprised of
the scope of a “chlorophyll derivative” (Brief, pages 6-9; Reply Brief, pages 1-4). Secondly, unlike in
Petrolite, the claimed derivatives are derivatives of a defined structure, i.e., chlorophyll, with at least
one positively stated limitation, i.e., at least partially water-soluble. Therefore, the holding in Petrolite
is not on point. Accordingly, the examiner’s rejection of claims 1, 3, 7 and 9 under 35 U.S.C. § 112,
second paragraph, as indefinite is reversed.
B. Rejection of claims 1, 3, 4 and 7 through 10 under 35 U.S.C. § 103 as unpatentable over
Amari in view of Merck.
Amari describes a permanent wave method comprising treating hair rolled around rods with a
liquid No. 1 containing a reducing agent, such as thioglycolate, for a time sufficient to break cystine
bridge bonds in the hair’s keratin (reducing step), washing the treated hair with water to rinse out liquid
No. 1, and then treating the rinsed hair with a liquid No. 2 containing an oxidizing agent and 0.01-5 wt.
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