Appeal No. 2003-1722 Page 8
Application No. 09/041,343
3. Indefiniteness
The examiner rejected all of the claims as indefinite:
Claims 112, and 117 recite that the “. . . template being a nitrogen
heterocycle substituted with two or more groups to which are [sic]
oligomers are attached. . .”. The metes and bounds of the template
is not clear. The ring carbon atoms are not defined, and which is
open and it may include any number of carbon atoms. And also the
heterocycle template may have additional heteroatoms such as
oxygen and sulfur in addition to the nitrogen. The specification has
no clear definition of the template and the number of carbon atoms
and the presence of hetero atoms in the hetero-ring.
Examiner’s Answer, page 9.
Appellants argue that
[t]he claim relates to a monocyclic nitrogen heterocycle substituted
with two or more of -O-, -NH- and -C=O. Applicants submit that
there is no indistinctness whatsoever about this definition. If the
template is a single ring, contains a nitrogen and has at least two
substituents derived from hydroxyl, amine or carboxyl, it falls within
the claim; if it contains two rings, if it contains no nitrogen, if [it] has
only one amine substituent, it falls outside the claim. There is
nothing indefinite about the claim.
Appeal Brief, page 14.
We agree with Appellants for the reasons succinctly stated in the Appeal
Brief. The fact that the claim is broad does not make it indefinite. See In re
Miller, 441 F.2d 689, 693, 169 USPQ 597, 600 (CCPA 1971) (“[B]readth is not to
be equated with indefiniteness.”). The rejection under 35 U.S.C. § 112, second
paragraph, is reversed.
4. Anticipation
Finally, the examiner rejected claims 112, 117, and 125 as anticipated by
either of Taddei-Peters or Lebl. The examiner pointed to the disclosure in
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 Next
Last modified: November 3, 2007