Appeal No. 1999-2661
Application 08/430,632
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). The claim language
in dispute is “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.”
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 Creative Prods., 31 F.3d 1154, 1158, 31 USPQ2d 1653, 1656 (Fed. Cir. 1994),
quoting Orthokinetics Inc v. Safety Travel Chairs Inc., 806 F.2d 1565, 1576, 1 USPQ2d 1081,
1088 (Fed. Cir. 1986).
The plain language of the claim clearly specifies two layers, each of which comprises a
blend of a polymer or copolymer of propylene and “a hydrocarbon resin, wherein the
hydrocarbon resin comprises a thermoplastic resin of low molecular weight made from relatively
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