Appeal No. 1996-2115
Application 08/809,933
II. Claims 1, 4, 5, 8, 10, 13, 23, 26, 27 and 29 stand rejected under 35 U.S.C. § 103
as being obvious over Flesher and Morgan.
III. Claims 23, 26, 27 and 29 stand rejected under 35 U.S.C. § 103 as being obvious
over Candau and Zweigle.
Opinion
After careful consideration of the rejections before us, the prior art, the arguments
presented by appellants and the examiner, as well as the evidence, we reverse rejections I
and II; and we affirm rejection III.
35 U.S.C. § 112, second paragraph, rejection
The test for definiteness is whether one skilled in the art would understand the
bounds of the claim when read in light of the specification. Miles Lab., Inc. v. Shandon Inc.,
997 F.2d 870, 875, 27 USPQ2d 1123, 1126 (Fed. Cir. 1993). If the claims read in light of
the specification reasonably apprise those skilled in the art of the scope of the invention, §
112 demands no more Id.
As to claim 29, the examiner contends that the phrase “acrylamide homopolymer” is
inconsistent with claim 23 because claim 23 requires the presence of at least 2 molar
parts per million of methylene-bis-acrylamide (MBA) comonomer (answer, pages 3-4).
We agree with appellants that the term “acrylamide homopolymer” as used in claim
29 reasonably apprises one of ordinary skill in the art that the scope of the invention is an
acrylamide polymer which is branched with methylenebisacrylamide (MBA). We note that
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