Appeal No. 1996-3982
Application No. 08/315,005
The Rejection under Section 112 -- Indefiniteness
“The legal standard for definiteness under the second paragraph of 35 U.S.C.
§ 112 is whether a claim reasonably apprises those of ordinary skill in the art of its
scope.” In re Warmerdam, 33 F.3d 1354, 1361, 31 USPQ2d 1754, 1759 (Fed.
Cir. 1994). The inquiry is to determine whether the claim sets out and circumscribes
a particular area with a reasonable degree of precision and particularity. The
definiteness of the language employed in a claim must be analyzed not in a vacuum, but
in light of the teachings of the particular application. In re Moore, 439 F.2d
1232, 1235, 169 USPQ 236, 238 (CCPA 1971).
It is the examiner’s position that the claims fail to recite a step of providing a first
liquid developer or composition comprising a liquid vehicle to be extracted.
Furthermore, the examiner argues that it is not clear what liquid developer has said
high solids content. See Answer, page 5. Hence, the claims are indefinite.
However, the specification, discloses a process for the preparation of a
concentrated liquid developer,
wherein the supercritical carbon dioxide solvent extraction comprises
supplying a developer suspension to the extraction vessel, which sus-
pension can be in the form of liquid, paste, or granular solid, and which
suspension contains a hydrocarbon dispersant to be removed in part or
in entirety; supplying to the extraction vessel a supercritical solvent for
the hydrocarbon dispersant; removing the supercritical solvent into
which the hydrocarbon dispersant has dissolved from the extraction
vessel; lowering the pressure of the solution to vaporize the solvent;
and recovering the concentrated liquid developer.
See specification, page 7, lines 19-28; see also the examples.
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