Appeal No. 2006-1759 Παγε 4
Application No. 09/984,184
appellants’ specification and the prior art, sets out and
circumscribes a particular area with a reasonable degree
of precision and particularity. See In re Moore, 439 F.2d 1232,
1235, 169 USPQ 236, 238 (CCPA 1971).
In the examiner’s rejection of claim 44 under 35 U.S.C.
§ 112, second paragraph, the examiner maintains that the polymers
recited in claim 44, with the exception of a few listed
polymers, have a scope that is not readily determinable for
reasons set forth in the written description rejection furnished
in the answer. See page 6 of the answer. The examiner basically
asserts that the disclosure lacks specificity and
exemplification in describing particular polymers fitting within
each type of polymer set forth in claim 44.
The examiner’s seems concerned with the breadth of the claim
terminology in listing types of water-soluble polymers that the
composition can include. However, the examiner has not
reasonably established that the breadth, in question here,
equates with indefiniteness. See In re Gardner, 427 F.2d 786,
788, 166 USPQ 138, 140 (CCPA 1970). From our reading of
appellants' specification, including the claims, and the relevant
prior art, it is clear to us that the examiner has not discharged
the burden of establishing a prima facie case of indefiniteness
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