Appeal No. 98-2456
Application No. 08/748,158
put to the onerous task of pointing out the specific
structural limitations imposed on the claimed product by the
recited process limitations.2
Like the Court in In re Hughes, 496 F.2d 1216, 1218,
182 USPQ 106, 108 (CCPA 1974), we do not consider that
defining the product of the present application in terms of
the process by which it is made makes the language of the
claims imprecise or indefinite. Their scope, if anything, is
more definite in reciting a novel product made by a specific
process, which process would have been fully understood by one
of ordinary skill in the art. Thus, we conclude that these
claims do not create a definiteness problem under 35 U.S.C. §
112, second paragraph, and for that reason will not sustain
the examiner's rejection before us on appeal.
2We are particularly of this view since the examiner has
already allowed claims (e.g., claims 2, 3, 9, 16 and 17) which
include one or the other of the process limitations questioned
by the examiner in the rejection before us on appeal.
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