Appeal No. 2004-2164
Application 09/553,894
unpatentability.”). In making out a prima facie case of non-compliance with this statutory
provision on the basis that a claim is indefinite for failing to particularly point out and distinctly
claim the subject matter which appellant regards as the invention, the examiner must establish
that when the language of the claim is considered as a whole as well as in view of the written
description in the specification as it would be interpreted by one of ordinary skill in the art, the
claim in fact fails to 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).
We determine that appealed claim 3 further modifies appealed claim 2 on which it
depends, by specifying a Markush group of materials which provide the required “a native starch
or modified starch.” Contrary to the examiner’s position, we find no requirement in either of
these claims, in appealed claim 1 on which claim 2 depends, or in any definition of the term
“starch” in the written description in the specification, for a “pure starch,” and thus determine
that one of ordinary skill in this art would not consider claim 3 to be misdescriptive. Indeed, we
note that the members of the Markush group in claim 3 are not starches per se because they
contain other compounds.
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