Appeal No. 1996-2566
Application No. 08/107,656
35 U.S.C. § 112, first paragraph. Ex parte Grasselli, 231
USPQ 393, 394, (Bd. App. 1983) aff’d mem., 738 F.2d 453 (Fed.
Cir. 1984). Accordingly, we sustain the examiner’s “written
description requirement” 35 U.S.C. § 112 rejection of the
appealed claims.
THE REJECTIONS UNDER THE SECOND PARAGRAPH OF 35 U.S.C. §
112
The appealed claims also stand rejected under the second
paragraph of 35 U.S.C. § 112 for indefiniteness. The examiner
argues that step e of appealed process claim 12, which
requires the thermal decomposition of the aluminum chloride
hexahydrate, violates the “proviso” that the heat treating
step g must be carried out “not prior to the feeding step f.”
Thus, the examiner believes that the claim is internally
inconsistent and thus indefinite. Apparently, the examiner
considers the thermal decomposition step e as somehow
equivalent to appellants’
heat-treating step g. As we have observed above, however,
heat-treating step g is specifically defined with respect to
both temperature and time ranges to form a specifically
defined desired product while step e involves thermal
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