Appeal No. 1998-2000
Application 08/469,171
We have carefully considered the record before us, and based thereon, find that we cannot
sustain either of the two grounds of rejection advanced by the examiner on appeal (answer, pages 3-
6).3
It is well settled that in making out a prima facie case of non-compliance with 35 U.S.C. §
112, second paragraph, because the claims are indefinite for failing to particularly point out and distinctly
claim the subject matter which appellants regard as the invention,4 the examiner must establish that when
the language of the appealed claim 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 claim in fact fails 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 4-5) any reason why one of ordinary skill in this art would not understand what is
claimed in claim 2 by the use of the term “tribo-additives” in light of the disclosure in the specification
accordance with claim 1 . . . ” (emphasis supplied). Any further examination of claim 12 should
include consideration of whether this claim complies with 35 U.S.C. § 112.
3 We observe that the examiner stated in the advisory action of September 10, 1997 (Paper No. 19)
that appellants’ response overcame “the 112 rejections of claims 20, 21 and 22.” The examiner
specifically in the answer (page 2), withdrew the “112 rejection of claim 20” which apparently involved
35 U.S.C. § 112, fourth paragraph (final rejection of March 13, 1997 (Paper No. 15; page 3)). The
examiner has, however, maintained the ground of rejection of “[c]laims 2, 21 and 22 . . . under 35
U.S.C. § 112, second paragraph,” but has explained the rejection only with respect to the claim term
“tribo additives” that appear only in claim 2 (answer, page 2; see final rejection (Paper No. 15; page
2)). The examiner has not set forth in the answer (see pages 3-4) the criticism directed to claims 21 and
22 in the final rejection (Paper No. 15; pages 2-3).
4 See In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ 2d 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. [Emphasis supplied.]”).
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