Appeal No. 1997-0005
Application 08/340,966
his stated 35 U.S.C. § 112, second paragraph, rejection.
Respecting the examiner’s contention that the claims are
indefinite because a particular amount of added
hydrogenation catalyst is not quantitatively defined, we point
out that the amount of catalyst added is functionally limited
in appellants’ claims to an amount which is “effective to
improve separation of hydrogenation catalyst metal from the
polymer solution.” There is nothing “intrinsically wrong”
with the use of functional language in drafting patent claims.
In re Swinehart, 439 F.2d 210, 212, 169 USPQ 226, 228 (CCPA
1971). It is thus apparent that the examiner has failed to
meet his burden of establishing that appealed claims 1 through
6 do not particularly point out and distinctly claim the
subject matter which appellants regard as their invention. We
reverse this rejection.
We also reverse the examiner’s rejection of appealed
claim 7 under 35 U.S.C. § 112, first paragraph, “written
description requirement.” The examiner contends that the
claim language in appealed claim 7 which defines the amount of
the added catalyst as “60 ppm by weight of nickel based on the
7
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