Appeal No. 1998-1855 8
Application No. 08/459,537
With respect to the term, “said heap is essentially free of manganese or
manganese-containing compounds,” at least the embodiment directed to the Genesis
Mine ore accounts for all of the minerals present in the ore and is free of manganese.
Accordingly, that single embodiment provides for an ore substantially free of manganese
or manganese-containing compounds.
The Indefiniteness Rejection
“The legal standard for definiteness [under the second paragraph of 35 U.S.C.
§ 112] is whether a claim reasonably apprises those of [ordinary] skill in the art of its
scope.” In re Warmerdam, 33 F.3d 1354, 1361, 31 USPQ2d 1754, 1759 (Fed. Cir.
1994). The inquiry is to determine whether the claim sets out and circumscribes a
particular area with a reasonable degree of precision and particularity. The definiteness
of
the language employed in a claim must be analyzed not in a vacuum, but in light of the
teachings of the particular application. In re Moore, 439 F.2d 1232, 1235, 169 USPQ
236, 238 (CCPA 1971).
It is the examiner’s position that the claimed subject matter is indefinite in
utilization of the transitional phrases, “consisting essentially of the following steps,” and
“critical bacterial population size.” As to the transitional language, it is well settled
that, “[a]lthough ‘consisting essentially of’ is typically used and defined in the context of
compositions of matter, we find nothing intrinsically wrong with the use of such language
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