Appeal No. 2002-0448 Page 3
Application No. 09/194,824
DISCUSSION
THE REJECTION UNDER 35 U.S.C. § 112, SECOND PARAGRAPH:
As set forth in Amgen Inc. v. Chugai Pharmaceutical Co., Ltd., 927 F.2d
1200, 1217, 18 USPQ2d 1016, 1030 (Fed. Cir. 1991):
The statute requires that “[t]he specification shall conclude
with one or more claims particularly pointing out and distinctly
claiming the subject matter which the applicant regards as his
invention.” A decision as to whether a claim is invalid under this
provision requires a determination whether those skilled in the art
would understand what is claimed. See Shatterproof Glass Corp.
v. Libbey-Owens Ford Co., 758 F.2d 613, 624, 225 USPQ 634, 641
(Fed. Cir. 1985) (Claims must “reasonably apprise those skilled in
the art” as to their scope and be “as precise as the subject matter
permits.”).
Furthermore, claim language must be analyzed “not in a vacuum, but always in
light of the teachings of the prior art and of the particular application disclosure
as it would be interpreted by one possessing the ordinary skill in the pertinent
art.” In re Moore, 439 F.2d 1232, 1235, 169 USPQ 236, 238 (CCPA 1971).
According to the examiner (Answer, page 14),
[s]ince the claimed invention is directed to a process of increasing
the viscosity using a reaction product, wherein the product can
potentially have various types of utility, and further since each utility
is interchangeable with the other, the metes and bounds of the
phrase ‘viscosity-increasing effective amount’ is not clear, and thus
the term is indefinite.”
In response, appellants argue (Brief, page 10),
a person of ordinary skill in the art will easily be able to determine
what amount of the claimed reaction product to employ in order to
achieve a desired level of viscosity. The precise amount of
reactant to be used will depend on the needs of the routineer with
respect to the degree of thickness they want to achieve.
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