Appeal No. 2002-0089
Application No. 09/331,647
(5) Claims 8-20 stand rejected under 35 U.S.C. § 103(a) as unpatentable over
Schambil.
a. The Rejections under 35 U.S.C. § 112
1. Indefiniteness
Claim 15 stands rejected under 35 U.S.C. § 112, second paragraph as indefinite.
According to the examiner, neither the claims nor the specification provides sufficient guidance
as to the “enhanced” refatting properties. (Examiner’s Answer, p. 4). 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 used in claim 15, the term “enhanced”
implies that the claimed process will result in higher or better refatting properties as compared to
a cleaning composition without the presence or the aqueous phase-version emulsion amount of
fats or oils on the skin after treatment. The examiner has failed to sufficiently explain why this
ordinary definition would not be appropriate in this instance.
2. Lack of Enablement
Claims 15-20 stand rejected under 35 U.S.C. § 112, first paragraph as lacking
enablement. Claims 15-20 are said to be directed to enhancing the refatting properties of a
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