Appeal 2006-2237
Application 10/153,764
11 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Haven and
Koike (id.). Claims 12-14 stand rejected under § 103(a) as unpatentable
over Haven and Koike (Answer 6). Claims 3, 4, 8 and 9 stand rejected
under § 103(a) as unpatentable over Haven and Koike further in view of Irita
(Answer 7).
We REVERSE the rejection on appeal based on paragraph two of
§ 112 essentially for the reasons stated in the Brief as well as those reasons
set forth below. We AFFIRM all rejections on appeal based on § 103(a)
essentially for the reasons stated in the Answer as well as those reasons set
forth below. Accordingly, the decision of the Examiner is AFFIRMED.
OPINION
A. The Rejection under § 112, ¶ 2
The Examiner finds that claims 3, 4 and 8 recite the term “at least one
non-pigmented oxide particle” and the meaning of this term is “unclear”
(Answer 3). The Examiner finds that the Specification exemplifies this term
as including alumina and silica (¶ [0027]) while the cited prior art (Tanabe)
recognizes these examples as pigments (Answer 3, citing Tanabe, col. 20, l.
67-col. 21, l. 5). Therefore the Examiner finds that Appellant is using the
term “pigmented” contrary to its ordinary meaning and thus the metes and
bounds of the term are vague and indefinite (id.).
Appellant argues that the term “non-pigmented oxide particle” and the
examples thereof to alumina and silica are “non-colored” white powders and
this term is consistent with the listing of Tanabe (Br. 6-7).
The legal standard for definiteness in claim language is whether one
of ordinary skill in the art would have been apprised of the scope of the
claim when read in light of the specification. See In re Warmerdam,
3
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