Appeal No. 1997-0005
Application 08/340,966
solution for extraction of the hydrogenation catalyst metals
(and residues). The final step of the claimed process involves
the separation of the hydrogenated polymer solution from the
aqueous acid extraction solution.
In rejecting appealed claims 1 through 6 under the
second paragraph of 35 U.S.C. § 112, the examiner contends
that the claim language “the amount of additional Group VIII
metal alkoxide or carboxylate and metal alkyl hydrogenation
catalyst effective to improve separation of hydrogenation
catalyst metal from the polymer solution” in the “adding” step
of appealed claim 1 renders the claim indefinite, because a
“particular amount” is not specified. Further, the examiner
explains that appealed claims 1 through 6 are indefinite since
undue experimentations are required to one
of ordinary skill in the art at the time of
invention to determine the said amount of
additional catalyst which depends on many
reaction parameters (such as pressure,
temperature or an initial amount of a cata-
lyst) which are absent in the claims (em-
phasis added).
See the answer at page 4.
Although the examiner’s rejection is predicated on
the second paragraph of 35 U.S.C. § 112, i.e., “indefinite-
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