Appeal No. 98-2247 5
Application No. 08/108,822
opposed to the definiteness of the claimed subject matter.
However, it is well settled that breadth does not necessarily render a claim
indefinite and the examiner has stated no other ground of rejection. In re Gardner, 427
F.2d 786, 788, 166 USPQ 138, 140 (CCPA 1970) (“Breadth is not indefiniteness.”);
In re Borkowski, 422 F.2d 904, 909, 164 USPQ 642, 645-46 (CCPA 1970).
Furthermore, we find that the description in the specification, page 17,
provides for the addition of a water soluble compound to previously formed liposomes in
at least one disclosed embodiment. Therefore, liposomes may be prepared in the
absence of a water soluble compound, such as a bioactive agent, which agent is not a
necessary element as alleged on the record before us. Accordingly, the claimed subject
matter directed to the formation of a liposome in the absence of a water soluble
compound, such as a bioactive agent, is not indefinite
On this record, we conclude that the specification provides a reasonable standard
for understanding the metes and bounds of the claimed subject matter, when the claims
are read in light of the specification. Seattle Box Co. v. Industrial Crating & Packing, Inc,
731 F.2d 818, 826, 221 USPQ 568, 573-574 (Fed. Cir. 1983). Accordingly, we
reverse the rejection of the examiner.
The Rejection under 35 U.S.C. § 103
“[T]he examiner bears the initial burden, on review of the prior art or on any
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