Appeal No. 2001-0421
Application 08/926,835
of 35 U.S.C. § 112. This circumstance forces me to conclude that
the majority has created and applied a per se rule for process
claims wherein compliance with the second paragraph of section
112 depends solely on whether “discernable method steps” are
“actively recite[d]” Slip Op., page 8. While administratively
convenient, such a per se rule is a legally improper substitute
for the thoughtful analysis required to assess section 112,
second paragraph, compliance. Compare In re Ochiai, 71 F.3d
1565, 1572, 37 USPQ2d 1127, 1133 (Fed. Cir. 1995).
EVEN ASSUMING CLAIM INDEFINITENESS, THE EXAMINER’S PRIOR ART
REJECTIONS SHOULD BE EVALUATED ON THE MERITS RATHER THAN
VACATED
In support of their indefiniteness position, the majority
panel members state “[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 an exogenous acid, (2) in situ formation of an
acid or are intended to encompass both manners of providing the
stated acid since the claims do not recite positive, active
steps.” Slip Op., pages 10-11. Concomitantly, in support of
their vacatur determination, the majority panel members express
the following rationale:
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