Appeal No. 1996-2690
Application 07/967,787
The rejection under 35 U.S.C. § 112, second paragraph
The examiner has rejected claims 5 and 12 as being indefinite for failing to
particularly point out and distinctly claim the subject matter which applicants regard as the
invention. The examiner states that the presence of the terminology "bifunctional" (claim 5)
and "difunctionalized" (claim 12) results in the claims being unclear as to what types of
functional groups are present on the compounds of these claims. (Answer, page 3). In
addition, the examiner has rejected, as a new ground of rejection in the Examiner's
Answer, claims 1-13 and 37, as being unclear as to what functional groups are present in
the "host polymer" and in the "guest crosslinking agent" to provide crosslinking upon
exposure to electromagnetic radiation. (Answer, page 5). The examiner appears
concerned that the claims do not recite specific functional groups disclosed in the
specification.
We point out that it is well established that "definiteness of the language employed
must be analyzed, not in a vacuum, but always in light of the prior art and of the particular
application disclosure as it would be interpreted by one possessing the ordinary level of
skill in the pertinent art." In re Moore, 439 F.2d 1232, 1235, 169 USPQ 236, 238 (CCPA
1971). We note that the purpose of the second paragraph of Section 112 is to basically
insure, with a reasonable degree of particularity, an adequate notification of the metes and
bounds of what is being claimed. See In re Hammack, 427 F.2d 1378, 1382, 166 USPQ
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