Appeal No. 1997-3392
Application 08/297,946
in such a way as to distinguish it from what was previously
known, i.e., from the prior art; and (b) to define the scope
of protection afforded by the patent. In both of those
aspects, claims are not technical descriptions of the
disclosed inventions but are legal documents like the
descriptions of lands by metes and bounds in a deed which
define the area conveyed but do not describe the land.” In re
Vamco Mach. & Tool, Inc., 752 F.2d 1564, 1577 n.5, 224 USPQ
617, 625 n.5 (Fed. Cir. 1985). Claims 14 and 15 require
controlling the starved feed addition such that, respectively,
core-shell and pseudo core-shell morphologies are produced.
The area circumscribed by the claims, therefore, would have
been reasonably clear to one of ordinary skill in the art.
The examiner argues that claim 28 is indefinite because
it merely recites that the component used to control the
molecular weight is selected during the starved feed addition,
and does not recite that an addition of that component
actually takes place (answer, page 12). The specification
teaches that the molecular weight is controlled by varying the
amount of the components recited in claim 28 which are present
7
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