Appeal No. 1999-0058
Application No. 08/701,878
would understand the bounds of the claim when read in light of
the specification. Orthokinetics, Inc. v. Safety Travel Chairs,
Inc., 806 F.2d 1565, 1576, 1 USPQ2d 1081, 1088 (Fed. Cir. 1986).
That is, a claim complies with the second paragraph of section
112 if, when read in light of the specification, it reasonably
apprises those skilled in the relevant art of the scope of the
invention. Hybritech Inc. v. Monoclonal Antibodies, Inc., 802
F.2d 1367, 1385, 231 USPQ 81, 94 (Fed. Cir. 1986).
In this case, the specification does not particularly limit
the manner by which the alkali or alkaline earth metal component
or the optional sulfur component is to be incorporated into the
catalyst, although an example of the introduction of alkali or
alkaline earth metal is provided at page 9, lines 4-8. Hence,
one skilled in the art would readily understand that appealed
claims 1 and 21 through 23 encompass any process that comprises
the recited steps, where the resulting catalyst contains alkali
or alkaline earth metal. Under these circumstances, the examiner
has not adequately established on this record why one skilled in
the relevant art would not be able to ascertain the bounds of the
appealed claims when read in light of the specification.
Rejection under 35 U.S.C. § 103
Bournonville describes a process for preparing a catalyst
comprising the steps of: (a) impregnating a carrier, i.e. a
support, with an aqueous or organic solution of at least one
nickel compound, the volume of the solution being preferably
equal or greater than the retention volume of the support; (b)
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