Appeal No. 2001-0130
Application No. 09/050,491
We affirm rejections III through V but reverse rejections I
and II.1
Rejection I: 35 U.S.C. § 112, ¶ 2
The examiner reasons that claims 9 and 36 are indefinite
because “it is unclear if the scope of the claims are open to
the broader claimed range or if it is limited to the more narrow
range.” (Answer, page 3.) In support of this reasoning, the
examiner cites Ex parte Wu, 10 USPQ2d 2031, 2033 (Bd. Pat. App.
& Inter. 1989). (Answer, pages 6-7.)
We cannot agree with the examiner on this issue.
As an initial matter, it is important to emphasize that the
examiner bears the initial burden of presenting a prima facie
case of unpatentability, whether it be based on prior art or on
any other ground. In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d
1443, 1444 (Fed. Cir. 1992). Further, the test for definiteness
1 The appellants have not contested the examiner’s holding
that the “Argument” section of the appeal brief filed Mar. 23,
2000 (paper 9) does not comply with 37 CFR § 1.192(c)(7)(1997)
because it does not include reasons why certain claims of each
group subject to a common ground of rejection should be
considered separately patentable. Accordingly, we confine our
discussion to claim 1 for rejection III, claim 4 for rejection
IV, and claim 15 for rejection V. In re McDaniel, 293 F.3d
1379, 1383, 63 USPQ2d 1462, 1465 (Fed. Cir. 2002)(“If the brief
fails to meet either requirement [of 37 CFR § 1.192(c)(7)], the
Board is free to select a single claim from each group of claims
subject to a common ground of rejection as representative of all
claims in that group and to decide the appeal of that rejection
based solely on the selected representative claim.”).
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