Appeal No. 1997-3643
Application No. 08/484,047
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). For the reasons provided
below, we find that claims 6-14 contain or depend from claims which contain language which lead to
confusion over the intended scope of the claimed subject matter.
Independent claim 6 recites the terminology “conventional constituents, such as Lubricants,
thickeners and thixotropic agents.” (See claim 6, emphasis added). Examples and preferences stated
in claims lead to confusion as to whether the narrow range of components is a claim limitation. In this
instance, the language “such as” renders the claim unclear as to whether the claim requires the presence
of the lubricants, thickeners and thixotropic agents or any conventional consituents. Additionally, it is
noted that the word “lubricants” should not be capitalized.
Independent claim 6 mentions that “if appropriate” further binders and further conventional
constituents are dispersed in the binder. It is unclear how one skilled in the art is to determine whether
or not the presence of the additional binders and conventional constituents is “appropriate.” By failing
to provide guidance as to how one determines the appropriateness of the additional components,
appellants’ have failed to properly set forth the metes and bounds of the claimed invention.
Independent claim 6 recites “a dispersing device, which comprises using unsaturated fatty acids
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