Appeal No. 2003-1162 Page 7
Application No. 09/468,292
OPINION
We take up the issues of indefiniteness first. To comply with § 112, ¶ 2, the claims must
“particularly point[] out and distinctly claim[] the subject matter the applicant regards as his
invention.” 35 U.S.C. § 112, ¶ 2 (2001). The standard is one of reasonableness: The claims
must set out and circumscribe a particular area with a reasonable degree of precision and
particularity. In re Moore, 439 F.2d 1232, 1235, 169 USPQ 236, 238 (CCPA 1971).
Issue (13b)
We start with Issue (13b), i.e., the rejection of claims 61-72 under 35 U.S.C. § 112, ¶ 2.
For this rejection, the claims stand or fall together (Amended Brief, p. 5). We select claim 61 to
represent the issues on appeal.
Claim 61 is dependent on claim 1 and further limits the identity of the ionic liquid used in
the method for vaporizing reactants. The ionic liquid must be of the formula:
wherein Y- consists essentially of a halide, sulfate, nitrate, ... or mixtures thereof.
Claim 61 defines a genus or subgenus by enumeration of species. Such a definition of a
genus or subgenus has long been accepted in patent claims. See Ex parte Markush, 1925 CD 126
(Com. Pat. 1924). Both the Examiner and Appellant use the terminology “Markush group” to
refer to the genera and subgenera of the claims which are defined by enumeration of species. See
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