Appeal No. 2003-1162 Page 13
Application No. 09/468,292
“substantial” or what levels of solid are acceptable within the confines of “substantially
dissolving.” The designation of “first solution 140" and “second solution 250" on page 12, lines
18 and 27, likewise, provides no guidance with respect to any dissolved and solid precursor
levels. There is no discussion of solid levels at all, much less any discussion of what liquid:solid
ratios equate to substantial dissolution.
The focus throughout the specification is on the solvating ability of the ionic liquid, not
on the amount of precursor dissolved relative to the amount of solid precursor remaining after the
addition of ionic liquid. The evidence supports the finding of the Examiner that the specification
does not provide the level of guidance required for one of ordinary skill in the art to understand
whether they are “substantially dissolving at least one precursor” in accordance with the claimed
method (Answer, p. 19).
The Examiner has established a prima facie case of indefiniteness with respect to the
subject matter of claims 59 and 60 which has not been sufficiently rebutted by Appellant.
Issue (12)
Next we consider Issue (12), i.e., the rejection of claims 59 and 60 under the written
description requirement of 35 U.S.C. § 112, ¶ 1. According to the Examiner, there is no written
descriptive support for “substantially dissolving at least one precursor in the ionic liquid” as
recited in claims 59 and 60.
We agree with the Examiner that the concept embodied by “substantially dissolving,” i.e.,
the concept of controlling the amount of ionic liquid so that a substantial amount of the precursor
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