Appeal No. 1997-2947
Application No. 08/352,079
having specific elements yet in actuality employ definitions in the specification that render the
claimed elements superfluous.
The 35 U.S.C. § 112, Second Paragraph, Rejection
The examiner has rejected claims 6-8 and 11-12 under 35 U.S.C. § 112, second
paragraph. According to the examiner the term “adsorption catalyst B” is unclear as it appears
that the adsorption catalyst B lacks recitation of a catalyst layer and as such the claim is
“incomplete and nonfunctional.” (Examiner’s Answer, p. 4).
At the outset, the proper standard for definiteness under 35 U.S.C. § 112, second
paragraph, is whether a claim reasonably apprises those of skill in the art of its scope. See In re
Warmerdam, 33 F.3d 1354, 1361, 31 USPQ2d 1754, 1759 (Fed. Cir. 1994); Amgen, Inc. v.
Chugai Pharmaceutical Co., Ltd., 927 F.2d 1200, 1217, 18 USPQ2d 1016, 1030 (Fed. Cir.
1991). As discussed above, the claim term “adsorption catalyst B” is clear and unambiguous in
its meaning. More particularly, the claim term apprises those of skill in the art that appellants
have claimed a catalyst for the purification of exhaust gases having an adsorption catalyst B
which has both adsorption properties and catalytic properties. Accordingly, we conclude that the
appellants’ claimed “adsorption catalyst B” reasonably apprises those of skill in the art of its
scope.
13
Page: Previous 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 Next
Last modified: November 3, 2007