Appeal No. 2002-1093 Page 5
Application No. 09/288,691
As stated in Solomon v. Kimberly-Clark Corp., 216 F.3d 1372 , 1377,
55 USPQ2d 1279, 1282 (Fed. Cir. 2000):
for a claim to comply with section 112, paragraph 2, it must satisfy two
requirements: first, it must set forth what "the applicant regards as his
invention," and second, it must do so with sufficient particularity and
distinctness, i.e., the claim must be sufficiently "definite."
In the Final Rejection mailed November 30, 2000 (Paper No. 10), the examiner
argues that claims 16 through 18 are not sufficiently definite and, therefore, do not
comply with 35 U.S.C. § 112, second paragraph. According to the examiner, "[t]he
claims are indefinite because they do not recite a complete process" (Paper No. 10,
page 2). In section (10) of the Examiner's Answer (Paper No. 18), setting forth
"Grounds of Rejection," the examiner adheres to the position that claims 16 through 18
are indefinite "because they do not recite a complete process for the production of the
compound of formula 1." But the examiner does not explain why persons skilled in the
art would not be reasonably apprised of the metes and bounds of claims 16 through 18.
For example, if persons skilled in the art carry out a process for preparing FF-MAS,
including the step of isomerizing a compound of formula (6), it would seem reasonably
clear that such persons infringe the process recited in claim 16; otherwise, they do not.
On this record, the examiner does not adequately state a prima facie case of
indefiniteness of claims 16 through 18 but, instead, rests on a subjective belief that the
appealed claims "do not recite a complete process." That is not enough to establish
that applicants' claims fail to comply with 35 U.S.C. § 112, second paragraph.
In section (11) of the Examiner's Answer, entitled "Response to Argument," the
examiner appears to "switch horses" and to argue that claims 16 through 18 do not set
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