Appeal No. 2003-1042 Page 3
Application No. 09/019,764
[t]he term “approximately” renders the claims indefinite. The
specification teaches exact concentrations for the claimed
preservatives (see page 3, line 21, through page 4, line 2); it fails to
describe approximate concentrations or to list parameters for how
far the concentrations can vary from the recited values and still be
considered to be encompassed within the claimed invention.
Therefore, the metes and bounds of the claimed invention cannot
be unambiguously determined and the claims are indefinite.
Examiner’s Answer, page 5.
“The test for definiteness is whether one skilled in the art would
understand the bounds of the claim when read in light of the specification.” Miles
Laboratories, Inc. v. Shandon, Inc., 997 F.2d 870, 875, 27 USPQ2d 1123, 1126
(Fed. Cir. 1993). Claims are in compliance with 35 U.S.C. § 112, second
paragraph, if “the claims, read in light of the specification, reasonably apprise
those skilled in the art and are as precise as the subject matter permits.”
Hybritech, Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 1385, 231 USPQ
81, 94-95 (Fed. Cir. 1987).
As set forth below with respect to the obviousness rejection, we find that
one of ordinary skill in the art would understand “approximately” as used in the
claims to mean an amount of variability of + 2.0%. Thus, the rejection under 35
U.S.C. § 112, second paragraph, is reversed.
2. Rejection under 35 U.S.C. § 103(a)
Claims 2, 4 and 7-13 stand rejected under 35 U.S.C. § 103(a) as being
obvious over the combination of Cleland, Belanger and Fox.
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