Appeal No. 2002-1557 Page 5
Application No. 09/305,746
2. Rejection under 35 U.S.C. § 112, second paragraph
The entire statement of the rejection as found in the Examiner’s Answer is
set forth below.
Claims 2-14 are rejected under 35 USC 112, second
paragraph, as being indefinite for failing to particularly point out and
distinctly claim he subject matter which Applicant regards as the
invention.
Examiners Answer, page 5.
The panel would first like to note that the statement of the rejection does
not set forth what the examiner is objecting to. Again, looking to the examiner’s
response to argument, it appears that the examiner finds the phrases “by a
technique other than spraying” and “an oily composition comprising an oily
component” indefinite. See Examiner’s Answer, page 7.
According to the examiner, the phrase “by a technique other than
spraying” is ambiguous because “[i]t is unclear whether the claims are directed to
every single technique known in the art, excluding spraying.” Id. Similarly, the
examiner finds the phrase “an oily composition comprising an oily component
vague and indefinite because “it is unclear what oily composition Appellant is
referring to that is present in the composition,” and that “[t]he composition may
comprise any possible ingredients in addition to an oily component.” Id.
The examiner’s concern appears to be that the objected to terms are
over-broad. “[B]readth is not to be equated with indefiniteness,” and the rejection
is reversed. In re Miller, 441 F.2d 689, 693, 169 USPQ 597, 600 (CCPA 1971);
see also In re Hyatt, 708 F.2d 712, 714-15, 218 USPQ 195, 197 (Fed. Cir. 1983).
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