Appeal No. 1997-0525 Page 4
Application No. 08/355,931
Rejection Under 35 U.S.C. § 112, second paragraph
The relevant inquiry under 35 U.S.C. § 112, second
paragraph, is whether the claim language, as it would have
been interpreted by one of ordinary skill in the art in light
of appellants' specification and the prior art, sets out and
circumscribes a particular area with a reasonable degree
of precision and particularity. See In re Moore, 439 F.2d
1232, 1235, 169 USPQ 236, 238 (CCPA 1971).
With regard to claims 7 and 8, the examiner (Paper No.
20, page 3) argues that:
the term “maintaining the silica concentration
of said concentrate above the line 12 ppm at 5 C and
170 ppm at 40 C” is unclear regarding to the degree
of silica concentration during the process and
process operating temperature, and range of
solubility at a particular temperature.
The examiner, however, does not carry the burden of
explaining why the language of either claim, as it would have
been interpreted by one of ordinary skill in the art in light
of appellants' specification, drawings and the prior art,
fails to set out and circumscribe a particular area with a
reasonable degree of precision and particularity. As
explained by appellants (Second Reply Brief, pages 2 and 3),
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