Appeal No. 1996-2690
Application 07/967,787
204, 208 (CCPA 1970). When viewed in light of this authority, we do not agree with the
examiner that the metes and bounds of claims 1-13 and 37 can not be determined when
read in light of the specification and as one skilled in this art would interpret them. The
examiner has the initial burden of demonstrating indefiniteness of the claims. In re Oetiker,
977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). Here, the examiner has
not convincingly demonstrated that one of ordinary skill would not readily recognize the
metes and bounds of the rejected claims. It would appear from the examiner's statement
of the rejection that there are functional groups which can be reasonably understood as
being encompassed by the claimed language. (Answer, pages 3 and 5). That the cited
terminology is susceptible to more than one interpretation does not, in and of itself, render
the claim indefinite. In our opinion, the examiner has not established that the rejected
claims, read in light of the specification and interpreted by one skilled in this art, would not
reasonably apprise such a skilled person what is encompassed by the claims. We,
therefore, reverse the rejection of claims 1-13 and 37 under 35 U.S.C. § 112, second
paragraph.
The rejections under 35 U.S.C. § 103
In rejecting the claims pending in this application under 35 U.S.C. § 103, the
examiner has relied upon Ulman, alone, in rejecting claims 1-4, 9-13, and 37, and Ulman in
combination with Reck, in rejecting claims 1-13 and 37. Since the rejection of the claims
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