Appeal No. 2005-0181
Application No. 09/781,631
XIII. The 35 U.S.C. § 103 rejection of claims 45 and 47-51 as
being obvious over Hanyu
We consider claim 45 in this rejection. Claim 45 recites
that the epoxy material is a cycloaliphatic epoxy resin.
The examiner finds that, at the bottom of column 2 of Hanyu,
Hanyu teaches that epoxides such as cycloaliphatic epoxides can
be used. Answer, page 10. Hence, the examiner concludes that
the selection of such an epoxide would have been obvious.
Appellant responds on pages 10-11 of the brief, and states
that the rejection is improper because Hanyu “does not teach the
purpose of the invention.” As discussed, supra, we note that use
limitations of a product being claimed, has no significance in a
product claim. Cf. In re Wiggins, 397 F.2d 356, 359 n.4, 158 USPQ
199, 201-202 n.4 (CCPA 1968).
In view of the above, we therefore affirm the 35 U.S.C.
§ 103 rejection of claims 45, 47, and 49-51 as being obvious over
Hanyu.
However, we reverse, pro forma, the rejection of claim 48.
As indicated, supra, we affirmed the rejection of this claim
under 35 U.S.C. § 112, second paragraph (indefiniteness). As
such, the metes and bounds of appealed claim 48 is unclear and
indefinite to the extent that it is impossible to ascertain the
propriety of the grounds of rejection of appealed claim 48 for
this rejection. See In re Wilson, 424 F.2d 1382, 1385, 165 USPQ
494, 496 (CCPA 1970); In re Steele, 305 F.2d 859, 862-63,
134 USPQ 292, 295-96 (CCPA 1962).
XIII. Conclusion
The rejection of claims 41, 43, and 48 under 35 U.S.C.
§ 112, second paragraph, (indefiniteness) is affirmed.
The rejection of claims 35, 36, 56, and 66 under 35
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