Appeal No. 2003-1016 Page 3
Application No. 09/450,999
In our judgment, this is not a close case and we shall not belabor the record with
extended commentary. Essentially, we agree with the position set forth by applicants in
their Appeal Brief and Reply Brief and we shall adopt that position as our own. We add
the following comments for emphasis.
The examiner argues that "cycloaliphatic" is improper and indefinite and suggests
that that term be replaced with "alicyclic." In support of this position, the examiner
refers to the definition of "alicyclic" at page 25 of the 1977 edition of The Condensed
Chemical Dictionary, published by Van Nostrand Reinhold Co. We note, however, that
applicants' filing date postdates the dictionary relied on by the examiner by more than
20 years.
As established by evidence in Appendix B attached to Paper No. 29, the state of
the art has advanced over the years, i.e., "cycloaliphatic" and "alicyclic" now appear to
synonyms. To emphasize this point, we refer to the following definition of
"cycloaliphatic" at page 288 of Merriam-Webster's Collegiate Dictionary," Tenth Ed.,
(Merriam-Webster, Inc. 1998)(copy enclosed with this opinion):
cycloaliphatic: alicyclic
Accordingly, we are persuaded that applicants' claims set out and circumscribe a
particular area with a reasonable degree of precision and particularity. In our judgment,
the claims at issue are not indefinite in view of the recitation "cycloaliphatic."
The rejection under 35 U.S.C. § 112, second paragraph, is reversed.
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