Appeal No. 1998-1125 Page 4
Application No. 08/410,247
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 the appealed claims, the examiner (answer,
pages 3 and 4) argues that:
Said claims are indefinite in failing to recite
either the boiling point at a specified pressure or
the vapor pressure at a specified temperature to
define the azeotropic or azeotropic-like
compositions.... A single boiling point (at a
particular pressure) is the characteristic by which
the presence or absence of an azeotrope is
determined. Therefore by failing to define this
critical, defining characteristic applicant fails to
particularly point out and distinctly claim the
inventive subject matter.
The examiner, however, does not carry the burden of
persuasively explaining why the language of the appealed
claims, 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
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