Appeal No. 1998-1159
Application 08/642,019
McGraw, Guaranccio et al. and Malito, which grounds encompass all of the claims in the application. 1
We determine that the examiner has failed to make out a prima facie case in these grounds of rejection
for the reasons pointed out by appellants in the brief, to which we add the following.
With respect to the ground of rejection under § 112 , second paragraph, the initial burden of
establishing a prima facie case on any ground under this statutory provision rests with the Examiner.
See In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992), citing In re
Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984) (“As discussed in In re
Piasecki, the examiner bears the initial burden, on review of the prior art or on any other ground, of
presenting a prima facie case of unpatentability.”). In making out a prima facie case of non-
compliance with this statutory provision on the basis that the claims are indefinite for failing to
particularly point out and distinctly claim the subject matter which appellants regard as the invention, the
examiner must establish that when the language of the appealed claims is considered as a whole as well
as in view of the specification as it would be interpreted by one of ordinary skill in the art, the claims in
fact fail to set out and circumscribe a particular area with a reasonable degree of precision and
particularity. In re Moore, 439 F.2d 1232, 1235, 169 USPQ 236, 238 (CCPA 1971). In other
words, the operative standard for determining whether § 112, second paragraph, has been complied
with is "whether those skilled in the art would understand what is claimed when the claim is read in light
of the specification." See The Beachcombers, Int’l. v. WildeWood Creative Prods., 31 F.3d 1154,
1158, 31 USPQ2d 1653, 1656 (Fed. Cir. 1994), quoting Orthokinetics Inc v. Safety Travel Chairs
Inc., 806 F.2d 1565, 1576, 1 USPQ2d 1081, 1088 (Fed. Cir. 1986). We fail to find in the
examiner’s stated position (answer, pages 3 and 5) any reason why one of ordinary skill in this art
would not understand what is claimed in the absence of a limitation in claim 1 with respect to the
viscosity of the blend of polysiloxanes (A) and (B). Indeed, one of ordinary skill in this art would
understand that a blend of polysiloxanes wherein the individual polysiloxanes satisfy the limitations with
respect to polysiloxanes (A) and (B), and which further satisfies the polydispersity requirement, will
satisfy the claim as long as ingredient (C) is satisfied. Thus, we reverse this ground of rejection.
1 See, e.g., the amendment of January 27, 1997(Paper No. 6), and January 30, 1997 (Paper No. 7).
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