Appeal No. 2001-2443
Application 09/108,541
bleaching/delignification stage rather than an extraction stage as is conventionally used
in the art. (Examiner’s Answer, page 4, lines 4 - 14).
As set forth in Amgen Inc. v. Chugai Pharmaceutical Co., Ltd., 927 F.2d 1200,
1217, 18 USPQ2d 1016, 1030 (Fed. Cir. 1991):
The statute requires that “[t]he specification shall conclude with one or more
claims particularly pointing out and distinctly claiming the subject matter which
the applicant regards as his invention.” A decision as to whether a claim is
invalid under this provision requires a determination whether those skilled in the
art would understand what is claimed. See Shatterproof Glass Corp. v. Libbey-
Owens Ford Co., 758 F.2d 613, 624, 225 USPQ 634, 641 (Fed. Cir.
1985)(Claims must “reasonably apprise those skilled in the art” as to their scope
and be “as precise as the subject matter permits”)
The Applicant has used the term “extraction” in his claims in reference to the
initial extraction stage and a second extraction stage (EO or OPD1EOPD2). Extraction is a
commonly understood term requiring the withdrawal or removal of a substance by
chemical or physical processes. See, e.g., Webster’s New Collegiate Dictionary, (c)
1979, pp. 403, a copy of which is attached to this opinion. It includes, e.g. solubilization
and removal of chlorinated lignins [delignification], removal of hemicellulose pentosan
from fibers, saponification of fatty acids and rosin acids in pulp, etc. (See Appeal Brief,
page XXXX, line XXXX). The Examiner’s concerns notwithstanding, it is abundantly
clear that extraction is required by the first and third steps in the bleaching process and
accordingly claims 1, 11, and 20 are not indefinite.
The Examiner further finds claim 1 to be indefinite in the use of the term “the
stage” at line 8 is inconsistent with the use of the term “the stages”, and in line 10,
where EP is inconsistent with Eop. (Examiner’s Answer, page 4, lines 14-16).
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