Appeal No. 1996-3587
Application 08/401,043
112, second paragraph. As pointed out by appellants in their brief, the claimed invention encompassed
by the appealed claims is a master alloy hardener composition that is used to prepare an aluminum cast
or ingot alloy or wrought aluminum alloy, as in the method of claim 70. According to appellants, the
master alloy hardener compositions of the appealed claims contain 2 or more alloying elements
consisting essentially of those specified which alloying elements are present at concentrations that are a
multiple equal to or greater than 2 to 50 of the concentration of said alloying elements, but in the same
ratios, as in the base alloy. See, e.g., claims 1, 31 and 70, and pages 2-8 of the brief. Indeed, we find
that appellants’ interpretation of the appealed claims reflects the disclosure in their specification, in
which we note that it is admitted that it was known in the art that “[m]aster alloys provide the desired
alloying elements in more concentrated form than the concentration of such elements in the final
aluminum base product” (page 1) and appellants teach that the claimed “[m]aster alloys are added to
commercially pure aluminum, scrap base alloy, or a combination thereof to produce the desired new
base alloy” (page 6).
The initial burden of establishing a prima facie case on any ground under the second paragraph
of § 112 rests with the Examiner. See In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444
(Fed. Cir. 1992), citing In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984)
(“As discussed in In re Piasecki, the examiner bears the initial burden, on review of the prior art or on
any other ground, of presenting a prima facie case of unpatentability.”). In making out a prima facie
case of non-compliance with this statutory provision because the claims are indefinite for failing to
particularly point out and distinctly claim the subject matter which appellants regard as the invention, the
examiner must establish that when the language of the appealed claims is considered as a whole as well
as in view of the specification as it would be interpreted by one of ordinary skill in the art, the claims in
fact fail to set out and circumscribe a particular area with a reasonable degree of precision and
particularity. In re Moore, 439 F.2d 1232, 1235, 169 USPQ 236, 238 (CCPA 1971). In other
words, the operative standard for determining whether § 112, second paragraph, has been complied
with is "whether those skilled in the art would understand what is claimed when the claim is read in light
of the specification." See The Beachcombers, Int’l. v. WildeWood Creative Prods., 31 F.3d 1154,
- 2 -
Page: Previous 1 2 3 4 5 Next
Last modified: November 3, 2007