Appeal No. 2002-1974
Application No. 09/023,953
We determine that the Examiner has not met the initial burden by failing to present
any reasons why one of ordinary skill in the art would not be apprised of the scope of the
claims on appeal. The language “said metal sheet being at least partially coated with a
catalytically active coating effective to convert hydrocarbons in an exhaust gas having a
hydrocarbon concentration of up to 4% by volume in the exhaust gas” of claim 1 defines
the metal sheet as partially coated with a coating and the properties of the coating thereon
in terms of function. In re Hughes, 496 F.2d 1216, 182 USPQ 106 (CCPA 1974)
(Defining a product in terms of a process does not make the language of the claim
imprecise or indefinite.). The claims provide adequate notification of the metes and
bounds of the claimed subject matter.
For the foregoing reasons and those set forth in the Brief, the rejection of claims 1,
3, 5 to 7 and 9 to 20 under 35 U.S.C. § 112, second paragraph, is reversed.
II. The Rejection under Section 103
We have carefully reviewed the claims, specification and applied prior art,
including all of the arguments advanced by both the Examiner and Appellants in support
of their respective positions. This review leads us to conclude that the rejection of claims
1, 3, 5 to 7 and 9 to 20 are not well founded. Our reasons appear below. We will limit
our discussion to the independent claim, i.e., claim 1.
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