Appeal 2006-2690
Application 10/101,242
Claims 35, 37-41, 44, 47 and 49 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Long (id.).
We REVERSE the rejection on appeal based on § 112, second
paragraph, essentially for the reasons stated in the Brief as well as those
reasons set forth below. We AFFIRM all other rejections on appeal
essentially for those 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, Second Paragraph
The Examiner finds the claims on appeal are indefinite “because they
state that a surface was formed of particles arranged in a pattern” and “it is
unclear what patterns are meant to exist on the surface of the product” (Final
Office action 3).
Appellants argue that they describe what is meant by “arranged in a
pattern” such that one of ordinary skill in the art could easily grasp what is
meant, citing paragraphs [0021], [0045], and [0046] of the Specification
where what “pattern” means is defined (Br. 4).
“The legal standard for definiteness [of claim language] is whether a
claim reasonably apprises those of skill in the art of its scope. [Citations
omitted].” In re Warmerdam, 33 F.3d 1354, 1361, 31 USPQ2d 1754, 1759
(Fed. Cir. 1994). The initial burden of establishing unpatentability, on any
ground, rests with the Examiner. See In re Oetiker, 977 F.2d 1443, 1445,
24 USPQ2d 1443, 1444 (Fed. Cir. 1992). On this record, we determine that
the Examiner has not met this burden. Although the Examiner appears to be
questioning the breadth of this claimed phrase (Answer 3-4), there are no
cogent reasons why one of ordinary skill in this art would not understand the
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