Appeal No. 1996-1273
Application 07/956,003
sustain either of the grounds of rejection advanced by the examiner on appeal. 3
The examiner has based the rejection of all of the appealed claims under 35 U.S.C. § 112,
second paragraph, on the premise that these claims are indefinite and fail to particularly point out and
distinctly claim the subject matter which appellants regard as their invention because the term
“analogue” is indefinite since this “term is similar to ‘derivatives’ which is held to be indefinite,” relying
on the authority of Petrolite Corp. v. Watson, 149 F.Supp 1, 113 USPQ 248 (D.D.C. 1957)
(answer, page 4). We are unaware of any authority, including that cited by the examiner, which holds4
that the term “derivative” or the term “analogue” is per se indefinite under the second paragraph of §
112. Thus, where the term “analogue” appears in a claim, as in any ground of rejection advanced on
the record, the initial burden of establishing a prima facie case that the appealed claims are indefinite
under the second paragraph of § 112 because of the presence of this term rests with the Examiner. See
In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ 2d 1443, 1444 (Fed. Cir. 1992), citing In re
Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984) (“As discussed in In re
Piasecki, the examiner bears the initial burden, on review of the prior art or on any other ground, of
presenting a prima facie case of unpatentability.”). It is well settled that a determination of whether a
claim complies with the second paragraph of § 112 involves an analysis of whether the language of the
claim as a whole sets out and circumscribes “a particular area with a reasonable degree of precision
and particularity,” In re Moore, 439 F.2d 1232, 1235, 169 USPQ 236, 238 (CCPA 1971), wherein
“[t]he operative standard for determining whether this requirement has been met is ‘whether those
skilled in the art would understand what is claimed when the claim is read in light of the specification.’”
The Beachcombers, Int’l. v. WildeWood Creative Prods., 31 F.3d 1154, 1158, 31 USPQ2d 1653,
1656 (Fed. Cir. 1994), citing Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565,
3The final rejection (Paper No. 13; page 2) included a ground of rejection of claims 8 through 10
under 35 U.S.C. § 112, first paragraph, which appealed claims have been canceled (see supra note 2).
4This is the sole basis for rejecting the appealed claims under the second paragraph of § 112
advanced by the examiner on appeal. The other grounds under the second paragraph of § 112 set
forth in the final rejection (Paper No. 13; pages 2-3) are assumed to have been withdrawn. Ex
parte Emm, 118 USPQ 180 (Bd. App. 1957).
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