Appeal No. 1998-2147
Application No. 08/247,356
paragraph, rejection, but will reverse the § 112, second paragraph, § 102 and § 103
rejections. Our reasons for this conclusion follow.
Rejection Under 35 U.S.C. § 112, Second Paragraph
The examiner must demonstrate that the claims do not “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). The purpose of the second paragraph of Section 112 is to basically
insure an adequate notification of the metes and bounds of what is being claimed. See
In re Hammack, 427 F.2d 1378, 1382, 166 USPQ 204, 208 (CCPA 1970).
The Examiner has rejected claims 28, 29 and 37 as unpatentable under 35
U.S.C. § 112, second paragraph as indefinite. According to the Examiner, “[i]t is not
clear how much photosensitivity is sufficient photosensitivity and how much
resolution is sufficient resolution.” (Examiner’s Answer, page 5).
We determine that the examiner has not met the initial burden by failing to
present any reasons why one of ordinary skill in the art would not be appraised of the
scope of the claims on appeal. The specification examples 32-56 describe
compositions with properties which are representative of the claimed invention. Table
6 describes the resolution and photosensitivity for alkali-soluble resins having a
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