Appeal No. 2001-0421
Application 08/926,835
interpretation is not only consistent with the specification
disclosure but is also consistent with the aforequoted literal
recitation of the appealed independent claims. Therefore, it is
my determination that these claims are simply broad, not
indefinite, with the respect to the manner by which the acid and
other ingredients are caused to be present in the reaction
mixture of the appellants’ claimed process6. It is here
necessary to remind the majority of the long settled legal
principle that claim breadth is not indefiniteness. In re
Gardner, 427 F.2d 786, 788, 166 USPQ 138, 140 (CCPA 1970).
The majority has created and applied a per se rule
It is, of course, the initial burden of the Patent and
Trademark Office to present a prima facie case of
unpatentability. In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d
1443, 1444 (Fed. Cir. 1992). For the above stated reasons, the
majority has failed utterly to present a prima facie case that
the appealed claims are unpatentable under the second paragraph
6 The majority panel members do not explain, and I do not
independently perceive, their basis for concluding that the above
discussed claim interpretation “does not provide a sufficient
claim construction so that the prior art can be properly
applied.” Slip Op., at page 19.
31
Page: Previous 24 25 26 27 28 29 30 31 32 33 34 35 36 37 38 Next
Last modified: November 3, 2007