Appeal No. 1999-2661
Application 08/430,632
impure monomers that are derived from coal-tar fractions or petroleum distillates” (emphasis
supplied)
The examiner submits that the phrase specifying the “hydrocarbon resin” material is
indefinite because the italicized terms “are relative terms which render claims 11-13 and 20
indefinite” because the terms “are not defined by the claim, [and] the specification does not
provide a standard for ascertaining the requisite degree” by which to determine “what types of
materials are being included or precluded” (answer, page 4).
We note here that the written description in the specification contains the following
disclosure:
“Hydrocarbon resin” (“HC” herein) and the like as used herein means resins made
by the polymerization of monomers composed of carbon and hydrogen only.
Thermoplastic resins of low molecular weight made from relatively impure monomers
derived from coal-tar fractions, petroleum distillates, etc. are also included. A
discussion of HC resins can be found e.g., in . . . [Bossaert] . . . . [Page 5, lines 4-10;
emphasis supplied.]
Appellant submits that the claim language complies with the requirements of the statute
because the definition of “hydrocarbon resin” in claim 11 is “a term of art in the chemical and
technical literature”), pointing to “Whittington’s Dictionary of Plastics, Third Edition, 1993” for
the quoted “dictionary definition”
[i]n the plastics industry, hydrocarbon resins are considered to be those thermoplastic
resins of low molecular weight made from relatively impure monomers that are
derived from coal-tar fractions, cracked-petroleum distillates, and turpentine. [Brief,
page 13.]
In this respect, appellant further contends that “The Encyclopedia of Polymer Science &
Engineering, Vol. 7, 1987, at page 758, contains a similar definition” (brief, page 13). Appellant
further points to, inter alia, Bossaert as an example that “hydrocarbon resin” is “also a term of art
in the patent literature” (id.).
We have found a definition similar to that quoted from “Whittington’s” in McGraw-Hill
Dictionary of Scientific and Technical Terms:3
hydrocarbon resins Brittle or gummy materials prepared by the polymerization of
several unsaturated constituents of coal-tar, rosin or petroleum . . . . [Page 967.]
3 Sybil P. Parker, ed., New York, McGraw-Hill, Inc. 1994.
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