Appeal No. 1997-1682
Application No. 08/270,198
Appellant submits at page 3 of the Brief that "[c]laims 2
and 6 do not stand or fall together." Also, appellant
stipulates that "[c]laims 9 and 11 do stand or fall together."
Appealed claim 9 stands rejected under 35 U.S.C. § 112,
second paragraph. Claims 2 and 6 stand rejected under
35 U.S.C. § 103 as being unpatentable over Nakajima in view of
Olson. Also, claims 9 and 11 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Tolliver in view of
DeBergalis.
We consider first the examiner's rejection of claim 9
under 35 U.S.C. § 112, second paragraph. According to the
examiner, "the phrase 'sufficiently immiscible as to . . . to
cause yellowing' is vague and indefinite because the clause
'to an extent sufficient to cause yellowing . . .' appears
confusing and contradictory with respect to the language to
the preamble which recites a 'yellow-resistant' article" (page
3 of Answer). However, the applicable test is not whether
claim language could be interpreted in such a way as to render
the invention indefinite, but, rather, whether the claim
language when read in light of the specification and state of
the prior art would be indefinite to one of ordinary skill in
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