Appeal No. 2001-0421
Application 08/926,835
majority’s position that the appealed claims are indefinite.
These claims are statutorily presumed to comply with the second
paragraph of section 112. They are not somehow rendered non-
compliant by the silence of the appellants and the examiner
regarding the specific claim-construction issues raised by the
majority. This point cannot be gainsaid. Yet, I am concerned
the majority panel members may have unwittingly allowed their
section 112, second paragraph, rejection to be inappropriately
driven by and based upon their desire for a more completely
developed prosecution history. Certainly, this rejection is not
otherwise explicable based on the facts and law here under
consideration. While the desire for a well developed prosecution
history is understandable, an attempt to achieve this desideratum
via a meritless section 112 rejection is completely unacceptable.
The claims are broad not indefinite
As indicated earlier, the process claims on appeal recite
considerable and specific information regarding the process
defined thereby. For example, these claims specify the type of
reaction involved in the process (i.e., a hydrogenation
reaction), the ingredients involved in the reaction and a variety
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