Appeal No. 1998-2002
Application 08/690,016
second paragraph. See Brief, p. 3. Nevertheless, in contrast
to Peters, appellants explain (Brief, p. 4):
Appellants are claiming a structure which is formed
when their apparatus is in use and some of the
elemental nickel in the first reaction zone reacts
with an impure gas stream and forms nickel carbonyl.
In other words, Appellants are claiming the actual
structure of their apparatus as it is used during
the purification of gases. The Peters case stands
for the proposition that a structure which is shown
in the prior art is not rendered patentable by the
recitation of process features specifying the manner
in which the structure is used. Accordingly, the
Peters case does not compel the conclusion that
claims defining a structure which is formed when an
apparatus is in use, such as the claims in the
subject application, are inherently indefinite.
Consistent with appellants’ arguments and the
specification, one of ordinary skill in the art would have
understood claims 33-40 and 42-57 to be directed to an
apparatus wherein a reaction between some amount of nickel and
carbon monoxide has already occurred in a first reaction zone
to form some amount of nickel carbonyl. See Miles Labs., Inc.
v. Shandon Inc., 997 F.2d 870, 875, 27 USPQ2d 1123, 1126 (Fed.
Cir. 1993), cert. denied, 510 U.S. 1100 (1994) (the test for
definiteness is whether one skilled in the art would
understand the bounds of the claim when read in light of the
specification). This interpretation appears to render the
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