Appeal No. 2001-0421
Application 08/926,835
recite positive, active steps, e.g., “adding an acid,” “forming
an acid in situ” etc. Therefore, one of ordinary skill in the
art would not be capable of determining the metes and bounds of
the claims even when read in light of the specification. See
Allen, 299 F.3d at 1348, 63 USPQ2d at 1775 (quoting Personalized
Media Communications, LLC v. Int’l Trade Comm’n, 161 F.3d 696,
705, 48 USPQ2d 1880, 1888 (Fed. Cir. 1998)) ("In determining
whether the claim is sufficiently definite, we must analyze
whether ‘one skilled in the art would understand the bounds of
the claim when read in light of the specification.’")
Therefore, we reject claims 1-37 under 35 U.S.C. § 112, second
paragraph, as failing to particularly point out and distinctly
claim the subject matter which applicants regard as their
invention. See Allen, 299 F.3d at 1349, 63 USPQ2d at 1776
(citing Zletz, 893 F.2d at 322, 13 USPQ2d at 1322 (claims which
do not particularly point out and distinctly claim what the
inventor regards as his invention must be rejected under Section
112, second paragraph)). See Zletz, 893 F.2d at 321, 13 USPQ2d
at 1322 (citations omitted)(“[D]uring patent prosecution when
claims can be amended, ambiguities should be recognized, scope
and breadth of language explored, and clarification imposed.”)
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