Appeal No. 96-2833
Application 08/202,772
The examiner argues that a compound can be classified as
both a detergent and a surface active agent and that,
consequently, appellants’ recitation of both surface active
agents and detergents in their Markush group of cleaning aids
renders appellants’ claims indefinite (answer, page 6).
An examiner is not to consider a claim to be indefinite
merely because a compound may be included in more than one
member of a Markush group. See Manual of Patenting Examining
Procedure § 2173.05(o) (7th ed., July 1998). The examiner has
the burden of explaining why, because of the recited Markush
group, appellants’ claims fail to satisfy the above-recited
test for definiteness, and the examiner has not carried this
burden.
For the above reasons, we reverse the rejection of
appellants’ claims 1-12 under 35 U.S.C. § 112, second
paragraph.
Rejection under 35 U.S.C. § 112, first paragraph
It is not clear whether the examiner has rejected the
claims as failing to comply with the written description
requirement or the enablement requirement of 35 U.S.C. § 112,
7
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