Appeal No. 1998-1718
Application No. 08/479,862
Upon careful consideration of the opposing arguments
presented on appeal, we will not sustain the examiner's
rejections.
We consider first the examiner's rejection of claims 16,
18, 19 and 21 under § 112, second paragraph. According to the
examiner, the claims "are indefinite in the concentrations of
80 ppb or 50 ppb because it is not clear what is the basis of
said ppb" (page 4 of Answer). However, it is fundamental that
claim language is not to be read in a vacuum but in light of
the specification as it would be interpreted by one of
ordinary skill in the art. In re Sneed, 710 F.2d 1544, 1548,
218 USPQ 385, 388 (Fed. Cir. 1983); In re Moore, 439 F.2d
1232, 1235, 169 USPQ 236, 238 (CCPA 1971). In the present
case, we agree with appellants that the basis for the claimed
concentrations would be understood by one of ordinary skill in
the art to be atmospheric air that has been treated to remove
the oxidants.
We will also not sustain the examiner's prior art
rejections since we concur with appellants that neither the
vacuum of Mimura nor the nitrogen atmosphere of Herron meets
the claimed step in appellants' process of removing part of or
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