Appeal No. 2003-1512 12
Application No. 09/256,709
JEFFREY T. SMITH, Administrative Patent Judge, concurring.
I agree with the majority’s affirmance of the rejection under 35 U.S.C. § 112,
second paragraph, as being indefinite for failing to particularly point out and distinctly
claim the subject matter which appellants’ regard as the invention.
I concur with the result of reversing the Examiner’s rejection under respectfully
35 U.S.C. § 112, first paragraph, as the specification, as originally filed, does not provide
support for the invention as now claimed and for failing to enable any person skilled in the
art to make and use the invention. However, my reasons differ.
Any analysis of the claims for compliance with 35 U.S.C. § 112 should start with
the second paragraph, then proceed with the first paragraph. In re Angstadt, 537 F.2d
498, 501, 190 USPQ 214, 217 (CCPA 1976).
I agree with the majority’s factual findings, analysis and conclusion that the absence
of a molecular weight designation renders the claims indefinite. Thus, claims 1 to 5 do not
comply with the requirements of 35 U.S.C. § 112, second paragraph. (Slip op. pages
3-6).
Since the specification is devoid of any disclosure identifying whether the stated
molecular is a weight average molecular weight, a number average molecular weight or
some other designated polymeric molecular weight. I am of the opinion that Appellants do
not particularly point out and distinctly claim the subject matter which they regard as their
invention in a manner such that a skilled person would be able to determine the metes and
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