Appeal No. 1997-0186
Application No. 08/314,568
In other words, on the particular facts of this case,
appellants have defined "alkoxy silane" by way of formula on
page 5, lines 14 through 16 in the specification and have
reiterated that formula in dependent claim 5. In this
context, the reference to "dimethoxydiphenylsilane" makes
little sense, distorts an art recognized term to mean
something that it does not mean, and cannot serve to broaden
the definition expressly provided by appellants. If this were
not the case, it is entirely unclear what other
"representative" compounds are included in the claim 1
recitation of "alkoxy silane."
We recommend that appellants cancel claim 5 and
incorporate the limitations thereof into claim 1 in order to
avoid any ambiguity. 5
Conclusion
The rejection of claims 1-4, 6-14 and 16-22 under 35
U.S.C. § 112, first paragraph, is reversed. The rejection of
claims 3 and 14 under 35 U.S.C. § 112, second paragraph, is
5Upon the cancellation of claim 5, the dependency of
claims 9 and 16 will also need to be corrected.
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