Appeal No. 1999-0981
Application 08/787,895
and under 35 U.S.C. § 103 as being unpatentable over Mueller in view of Bossaert et al.
(Bossaert).3 We determine that the examiner has failed to make out a prima facie case with
respect to all grounds of rejection.
The dispositive issue in this appeal is the interpretation to be made of the claim language
“two outer layers comprising a blend of propylene polymer or copolymer, and a hydrocarbon
resin, wherein the hydrocarbon resin comprises a thermoplastic resin of low molecular weight
made from relatively impure monomers that are derived from coal-tar fractions or petroleum
distillates.” We must interpret the claim in light of the written description in appellant’s
specification as it would be interpreted by one of ordinary skill in this art. See In re Morris, 127
F.3d 1048, 1054-55, 44 USPQ2d 1023, 1027 (Fed. Cir. 1997). In this instance, our consideration
of this matter also involves review of the ground of rejection under 35 U.S.C. § 112, second
paragraph. The initial burden of establishing a prima facie case on any ground under the second
paragraph of § 112 rests with the Examiner. See In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d
1443, 1444 (Fed. Cir. 1992), citing In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788
(Fed. Cir. 1984) (“As discussed in In re Piasecki, the examiner bears the initial burden, on
review of the prior art or on any other ground, of presenting a prima facie case of
unpatentability.”). In making out a prima facie case of non-compliance with this statutory
provision on the basis that a claim is indefinite for failing to particularly point out and distinctly
claim the subject matter which appellant regards as the invention, the examiner must establish
that when the language of the claim is considered as a whole as well as in view of the written
description in the specification as it would be interpreted by one of ordinary skill in the art, the
claim in fact fails to 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). In other words, the operative standard for determining whether § 112, second paragraph,
has been complied with is "whether those skilled in the art would understand what is claimed
when the claim is read in light of the specification." See The Beachcombers, Int’l. v. WildeWood
appealed claim 20 as it stands of record reads in part “the film is an oriented, heat shrinkable
film” and not as set forth in the appendix to the brief.
3 Answer, pages 4-9.
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