Appeal No. 2001-1045 Page 9
Application No. 09/178,594
removable.” He therefore concluded that the definition of R3 lacked adequate
descriptive support in the specification.
The examiner also rejected the claims on the basis that the limitation
“easily removed” is indefinite. He noted that the phrase “easily removed” does
not occur in the specification, and the specification provides no other guidance to
distinguish between protective groups that are “easily” removed and those that
are “not easily” removed. He concluded that it is unclear which protective groups
are, and which are not, encompassed by the claims. See the Examiner’s
Answer, page 7.
Again, we agree with the examiner. Although the claim limitations need
not appear in the same words in the specification, the description provided by the
specification must show possession of the invention defined by the claims. In
this case, nothing in the specification suggests that the description of protective
groups removed by hydrolysis or some kind of “selective procedure” shows
possession of the “easily removed” protective group recited in claim 15.
With respect to the definiteness of the “easily removed” limitation, we note
that terms of degree, such as “easily,” are not per se indefinite. “When a word of
degree is used the [examiner] must determine whether the patent’s specification
provides some standard for measuring that degree.” Seattle Box Co. v. Indus.
Crating & Packaging, Inc., 731 F.2d 818, 826, 221 USPQ 568, 574 (Fed. Cir.
1984). See also Ex parte Anderson, 21 USPQ2d 1241, 1249 (Bd. Pat. App. Int.
1991) (Where terms such as “superior” and “comparable” are not defined in the
specification, “the issue is whether one skilled in the art at that time would have
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