Appeal No. 2001-0421
Application 08/926,835
phrased by the majority, “[i]t does not appear that one skilled
in the art would be able to determine whether the claims are
limited to (1) the addition of an exogenous acid, (2) in situ
formation of an acid or are intended to encompass both manners of
providing the stated acid.” Slip Op., page 10. This is
incorrect.
As recognized (though not practiced) by the majority, the
definiteness of claim language must be analyzed, not in a vacuum
but, always in light of the prior art and of the particular
application disclosure as it would be interpreted by one
possessing the ordinary level of skill in the pertinent art. In
re Moore, 439 F.2d at 1235, 169 USPQ at 238.
In this regard, the appellants’ specification discloses that
their invention is based on the discovery that catalyst activity
in processes of the type under consideration can be increased if
the reaction mixture contains a halide and an acid. See the
subject specification at, for example, page 1, penultimate
paragraph. It is the presence of the halide and acid in the
reaction mixture which effects the increased catalyst activity.
There is absolutely no disclosure in the appellants’
specification that the increased catalyst activity results from
the particular manner by which these or any other ingredients are
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