Appeal No. 2003-0667 Page 15
Application No. 09/514,699
Administrative Patent Judge Pak, Concurring-in-part and dissenting-in-part.
I concur with the majority’s conclusions involving the affirmance of the examiner’s § 103
rejections. However, I do not share the majority’s position that claim 10 violates the
requirements set forth in the second paragraph of 35 U.S.C. § 112.
35 U.S.C. § 112, second paragraph, states:
The specification shall conclude with one or more claims particularly pointing and
distinctly claiming the subject matter which the applicant regards as his [or her]
invention.
This statute is interpreted as setting forth two requirements, first, a claim must be written with
sufficient particularity and distinctiveness and second, a claim must recite what the appellants
regard as their invention. Solomon v. Kimberly-Clark Corp., 216 F.3d 1372, 1377, 55 USPQ2d
1279, 1282 (Fed. Cir. 2000). The former requires a determination as to whether the claim is
definite. Id. The latter requires a determination as to whether the appellants claim a certain
subject matter contrary to what they regard as their invention. Allen Engineering Corp v.
Bartell Indus., Inc., 299 F.3d 1336, 1349 and 63 USPQ2d 1769, 1776 (Fed. Cir. 2002).
According to the majority (the decision, page 11);
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.
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