Appeal No. 2003-0667 Page 11
Application No. 09/514,699
As a final point, we note that Appellants base no arguments upon objective evidence of
non-obviousness such as unexpected results. We conclude that the Examiner has established a
prima facie case of obviousness with respect to the subject matter of claims 1, 3-5, 7, and 9
which has not been sufficiently rebutted by Appellants.
Claim 10
Claim 10 stands rejected under 35 U.S.C. § 112, ¶ 2. 35 U.S.C. §112, ¶ 2 contains two
requirements: “first, the claim 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.’” Allen Eng’g Corp. v. Bartell Indus., Inc., 299 F.3d 1336, 1348, 63
USPQ2d 1769, 1775 (Fed. Cir. 2002).
Because a claim cannot be read apart from and independent of the supporting disclosure
on which it is based, it must be read in light of the disclosure. In re Cohn, 438 F.2d 989, 993,
169 USPQ 95, 98 (CCPA 1971). But, here, there is an inconsistency in meaning between claim
10 and the disclosure. Claim 10 recites that the reclaimed undeveloped developer cake “is
separated” from the second liquid developer. The specification, on the other hand, describes that
the reclaimed developer cake “can be kept separated” from the second liquid developer
(specification at p. 14, ll. 12-16). The words “is separated” connote a step of dividing whereas
the words “is kept separated” connote a step of preventing contact. The absence of the word
“kept” in the claim gives the claim a different meaning from that advanced by the specification
and, therefore, claim 10 fails to particularly point out and distinctly claim the subject matter
which the Appellants regard as their invention. A claim that fails at “particularly pointing out
and distinctly claiming” the subject matter which the Appellants are entitled to claim as their
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