Appeal No. 2002-2241
Application 09/548,294
and based on our review, find that we cannot sustain the rejection of appealed claims 5 and 61
under 35 U.S.C. § 112, second paragraph, as being indefinite for failing to particularly point out
and distinctly claim the subject matter which applicants regard as the invention.2
It is well settled that the examiner must consider all claim limitations in determining
whether the claimed invention as defined by all of the claim limitations of the claim complies
with any and all applicable statutory provisions. See, e.g., In re Geerdes, 491 F.2d 1260, 1262-
63, 180 USPQ 789, 791-92 (CCPA 1974) (In considering grounds of rejection under 35 U.S.C.
§§ 103 and 112, “every limitation in the claim must be given effect rather than considering one in
isolation from the others.”). In the present appeal, we agree with appellants (e.g., brief, page 6
third paragraph) that the examiner has ignored the claim limitation “where the siloxane block
copolymer has ≤ 600 Si atoms.” Thus, while certain formula members, separately and severally,
would appear to render appealed claims 5 and 6 open-ended and thus indefinite, the clear
limitation on the number of silicon atoms in said limitation assures that these claims are indeed
closed and thus definite with respect to the encompassed siloxane block copolymer.
Accordingly, since the examiner has failed to establish a prima facie case of
indefiniteness under § 112, second paragraph,3 we reverse the ground of rejection.
1 See the amendments of April 12, 2000 (Paper No. 2) and February 28, 2002 (Paper No. 16).
We observe that the clerical entry of the latter amendment with respect to appealed claim 5 is
incomplete. Also of record are claims 12 and 13 which have been objected to by the examiner,
and claims 7 through 12 and 14 through 24 which have been withdrawn from consideration by
the examiner under 37 CFR § 1.142(b).
2 Answer, pages 3-4.
3 See In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ 2d 1443, 1444 (Fed. Cir. 1992), citing In re
Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984) (“As discussed in In re
Piasecki, the examiner bears the initial burden, on review of the prior art or on any other ground,
of presenting a prima facie case of unpatentability. [Emphasis supplied.]”).
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