Appeal No. 2003-1162 Page 11
Application No. 09/468,292
unclear, particularly since one of the anions specifically listed in claim 61, chloroaluminate, is
said to react undesirably with certain precursor molecules.
For the above reasons, we conclude that the Examiner has established that claims 61-72
are indefinite in violation of 35 U.S.C. § 112, ¶ 2.
Issue (13a)
We next turn to Issue (13a), i.e., the rejection of claims 59 and 60 under 35 U.S.C. § 112,
¶ 2 on the basis that “substantially dissolving” in the phrase “substantially dissolving at least one
precursor in the ionic liquid” renders those claims indefinite.
Appellant argues that the “substantially dissolving” limitation distinguishes the claimed
process from that of Frigo in view of Freemantle. A closer look at the issues behind this
argument provides a background for understanding the issue of indefiniteness. Frigo describes a
process in which a precursor is dissolved in solvent, but the amount of solvent is limited. The
amount of solvent added is such that the bottom of the bubbler inlet tube is covered, but not so
much as to dissolve all of the precursor (Frigo, col. 3, l. 61 to col. 4, l. 4). Some of the precursor
remains as a solid phase (Id.). Appellant argues that Frigo teaches away from “substantially
dissolving a precursor” because Frigo discloses a preference for leaving 50% or more of the
precursor undissolved (Amended Brief, p. 8). According to Appellant, “substantially dissolving”
means dissolving more than 50 wt% of the precursor (Amended Brief, p. 16). The key point is
that “substantially dissolving ” is intended to provide a limit on the amount of undissolved solid
which can be present after the addition of the solvent.
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