Appeal No. 1997-3392
Application 08/297,946
degree of conversion recited in claims 2 and 20, from which
claims 4 and 22, respectively, depend (answer, pages 27-28).
Claims 2 and 20 require polymerizing until a particular degree
of conversion is reached, and stopping the polymerization by
reducing a temperature of the partially polymerized monomer.
Thus, it would have been clear to one of ordinary skill in the
art that the temperature which is reduced is that of the
polymerization and that the temperature is reduced from the
polymerization temperature to a temperature at which the
polymerization is stopped.
The examiner argues that claims 14 and 15 are indefinite
because they are incomplete in that they do not recite the
essential cooperative relationship between the starting of the
starved feed addition and the toner morphology (answer, pages
11 and 30). The relevant issue is whether the claim language,
as it would have been interpreted by one of ordinary skill in
the art in light of the appellants’ specification and the
prior art, sets out and circumscribes a particular area with a
reasonable degree of precision and particularity. “The
function of claims is (a) to point out what the invention is
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