Appeal No. 2005-1402 6
Application No. 10/403,021
(1000 grams) of a solvent. In contrast to Exxon, appellants have failed to present any
evidence which establishes that the second definition of solubility, i.e., the quantity of
solute dissolvable in one liter of solvent, is not applicable in the context of the claimed
invention or is "extremely unreliable." In further contrast to Exxon, appellants have failed
to establish that a substance having a solubility of at least 10 grams in 100 grams of water
is not “substantially different” from a substance having a solubility of at least 10 grams in
one liter (1000 grams) of water.
For the reasons set forth above, we agree with the examiner that claims 3 and 4 are
indefinite because the amount of water that the substance is soluble in is not specified.
See All Dental Prodx, LLC v. Advantage Dental Prods., Inc., 309 F.3d 774,
779-80, 64 USPQ2d 1945, 1949 (Fed. Cir. 2002) (“The primary purpose of the definiteness
requirement is to ensure that the claims are written in such a way that they give notice to
the public of the extent of the legal protection afforded by the patent, so that interested
members of the public, e.g., competitors of the patent owner, can determine whether or
not they infringe.”). Therefore, the rejection of claims 3 and 4 under 35 U.S.C. § 112,
second paragraph, as being indefinite for failing to particularly point out and distinctly claim
the subject matter which appellants regard as the invention is affirmed.
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