Appeal No. 1996-3292
Application 07/991,467
Rejection (1)
(a) 35 U.S.C. § 112, Second Paragraph
The examiner asserts that the appealed claims do not comply with § 112, second paragraph,
because: (i) in the Markush group recited in claim 1 (and claim 20), the group members "polyethers"
and "polyglycols" overlap; (ii) the compound recited in claim 5 is not a catalyst for curing all polymers,
and therefore impliedly limits claim 5 to the polymers for which it is a catalyst; (iii) the expression
"formulated such that" in claims 1 (and 20) is indefinite. We will treat these grounds seriatim.
(i) It has been held that a claim in which two members of a Markush group overlap, i.e., are not
mutually exclusive, is indefinite because such overlap constitutes double inclusion of an element. See,
e.g., Ex parte Clark, 174 USPQ 40, 42 (Bd. App. 1971). However, there is no automatic "rule
against double inclusion", In re Kelley, 305 F.2d 909, 916, 134 USPQ 397, 402 (CCPA 1962), but
rather, in determining whether a claim complies with the second paragraph of § 112, the question is
whether that claim "reasonably apprises those of skill in the art of its scope." In re Warmerdam, 33
F.3d 1354, 1361, 31 UPSQ2d 1754, 1759 (Fed. Cir. 1994). In the present case, notwithstanding
that there is overlap between "polyethers" and "polyglycols", we do not consider that one of ordinary
skill would have any doubt as to the scope of the Markush group recited in claims 1 or 20.
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