Appeal No. 2005-1402 5
Application No. 10/403,021
person having ordinary skill in the art would not have understood which definition is
intended. Exxon challenged the defendant's testimony that at least two of the definitions
would produce substantially different results. As for the other definitions, the Court
concluded that the third definition was extremely unreliable, and the fourth definition was
not applicable in the context of the claimed invention. Accordingly, the Court held that the
defendant failed to meet its burden to show that a person having ordinary skill in the art
would not have understood how to calculate the average diameter and, for this reason,
concluded that the term is not indefinite. Exxon, 46 Fed. Cl. at 296-98, 54 USPQ2d at
1534-44.
In this case, the amount of water, i.e., solvent, is not specified in claims 3 and 4,
and the specification fails to clarify the matter. See In re Moore, 439 F.2d 1232, 1235, 169
USPQ 236, 238 (CCPA 1971) (definiteness under 35 U.S.C. § 112, second paragraph, is
analyzed in light of the teachings of the prior art and of the particular application disclosure
as it would be interpreted by one possessing the ordinary skill in the pertinent art).
Nevertheless, appellants argue that one of ordinary skill in the art would have understood
that claims 3 and 4 require a substance having a solubility of 10 grams or more in 100
grams of water.
We disagree. The record establishes that one of ordinary skill in the art would have
understood that "solubility" can be defined at least two ways, i.e., the quantity of a solute
dissolvable in 100 grams of a solvent or the quantity of a solute dissolvable in one liter
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