Appeal No. 2004-2079 Page 4
Application No. 09/754,958
We affirm the rejection under 35 U.S.C. § 112, second paragraph. Having
disposed of all claims on appeal, we do not reach the merits of the rejections
under 35 U.S.C. § 112, first paragraph.
DISCUSSION
THE REJECTION UNDER 35 U.S.C. § 112, SECOND PARAGRAPH:
According to appellants (Brief, page 2), “[t]he claims on appeal may be
grouped as follows: 1) claims 12, 15 and 16 [now claims 17, 20 and 21]; 2) claim
13 [now claim 18]; and 3) claim 14 [now claim 19].” Accordingly, claims 18 and
19 stand or fall alone. Claims 20 and 21 will stand or fall together with claim 17.
In re Young, 927 F.2d 588, 590, 18 USPQ2d 1089, 1091 (Fed. Cir. 1991).
The legal standard for indefiniteness under 35 U.S.C § 112, second
paragraph, is whether a claim reasonably apprises those of skill in the art of its
scope. See, Amgen Inc. v. Chugai Pharmaceutical Co., Ltd. 927 F.2d 1200,
1217, 18 USPQ2d 1016, 1030 (Fed. Cir. 1991). For the following reasons, it is
our opinion that the claims do not comply with this standard.
Claim 17
Formulas:
According to the examiner claim 17 is indefinite in the recitation of the
phrase “compounds comprising structure of formula II or of formula III,” wherein
the claim defines Formula II as “A-B-D-C-D'-” and Formula III as “A-B-D- and -D'-
C.” Answer, bridging paragraph, pages 9-10. The examiner appreciates
(Answer, page 9) that “alternative expressions are permitted if they present no
uncertainty or ambiguity with respect to the question of scope or clarity of the
claims.” See Manual of Patent Examining Procedure (MPEP) § 2173.05 (h).
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