Appeal No. 2005-1402 4
Application No. 10/403,021
Appellants' claimed substance in water, as in claims 3 and 4, is defined as 10
g or more per 100 g of water.
The examiner agrees that “grams solute per 100 grams solvent” is a known and
often expressed measurement of the solubility of a solute. However, the examiner points
out that there are other reasonable definitions of “solubility,” such as grams per liter, and
relies on a definition of “molar solubility” in Hackh's Chemical Dictionary for support (copy
attached). The examiner argues that a term in a claim cannot be construed to have one
particular meaning where there is more than one reasonable meaning. Thus, the
examiner concludes that the claims are indefinite under 35 U.S.C. § 112, second
paragraph, since there is more than one reasonable meaning of “solubility.” Answer, p. 3.
In response, appellants argue that (Reply brief, p. 5):
[T]he mere existence of other ways to calculate solubility does not
necessarily make the claim language "solubility in water of 10 g or more"
indefinite. For example, in Exxon Research and Engineering Co. v. United
States, 46 Fed. Cl. 278, 291, 54 U.S.P.Q.2d 1519 (Ct. Fed. Cl. 2000), the
defendants presented testimony that there were at least four ways to define
the claim term "average diameter." . . . However, the court held that such
evidence did not establish that one skilled in the art would not understand
how to calculate the average diameter.
In Exxon,4 the defendant argued that the term "average diameter" is indefinite and,
for support, offered testimony to establish that there are at least four possible definitions of
the term. The defendant argued that each definition produces a different value, and a
4We note that Exxon Research and Engineering Co. v. United States, 46 Fed. Cl. 278,
54 USPQ2d 1519 (Ct. Fed. Cl. 2000), is not binding precedent on the Board of Patent Appeals and
Interferences. Nevertheless, we have distinguished the facts in Exxon from the facts in the case on
appeal.
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