Appeal No. 98-2247 4
Application No. 08/108,822
OPINION
We have carefully considered all of the arguments advanced by the appellants and
the examiner and agree with the appellants that the rejections of claims 129, 131 and
136 through 151, are not well founded. Accordingly, we reverse each of the rejections.
The Rejection under 35 U.S.C. §112, Second Paragraph
“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 “not
reciting that the aqueous phase contains a bioactive agent in the event that the salt-
forming base is not itself a bioactive agent.” See Answer, page 8. In our view, the
examiner’s submission is directed to the broudness of the claimed subject matter as
Answer, pages 3 and 8 in conjunction with the appellants supporting statement at Oral Hearing necessarily leads
us to conclude that the independent claim at issue in the rejection under the second paragraph of 35 U.S.C. §
112 is claim 129, not claim 120.
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