Appeal No. 2001-0389 Page 4
Application No. 09/237,880
The examiner bears the initial burden of presenting a
prima facie case of unpatentability, whether the rejection
is based on prior art or any other ground. See In re
Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed.
Cir. 1992). The requirement under 35 U.S.C. §112, second
paragraph, is only that the claims 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 definiteness of the language
employed in the claims must be analyzed, not in a vacuum,
but always in light of the teachings of the prior art and
the application disclosure as it would be interpreted by one
of ordinary skill in the art. See In re Angstadt, 537 F.2d
498, 501, 190 USPQ 214, 217 (CCPA 1976).
Appellants explain that the Colour Index is a known
publication, published by the Society of Dyers and
Colourists and the American Association of Textile Chemists
and Colorists, and is the definitive guide for commercially
available dyes and pigments and their technical properties.
(brief, page 8). Appellants’ position is that, therefore,
“C.I. Solvent Yellow 138” is easily identifiable by using
this publication.
We determine that the examiner has not convincingly
explained why the skilled artisan would not be reasonably
apprised of the claim scope when the Colour Index identifies
the dye. It appears that the examiner believes that the
chemical formula of the dye could be subject to change and
therefore, in this way, the claim is indefinite. (answer,
page 3). Yet, the examiner has not established that one of
ordinary skill in the art would not understand, with respect
to definiteness, what specific color corresponds to C.I.
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