Appeal No. 2006-3310 Page 5
Application No. 10/282,424
To the extent that Appellants argue that the composition is non-flowable at
“temperatures between about 120°F and infinity,” we understand this to mean that
the composition could transition from being non-flowable to flowable at any point in
this range. See Brief, page 4.
Indefiniteness under § 112, second paragraph
Claim 24 stands rejected under 35 U.S.C § 112, second paragraph, as being
indefinite.
The claimed anti-seize composition of claim 1 is “non-flowable at temperatures
greater than about 120°F.” Dependent claim 24 further requires that “said anti-seize
composition is dimensionally stable up to 130°F.” The Examiner argues that claim
24 fails to further limit claim 1 because it is partly outside the scope of claim 1.
Claim 24 fails to further [limit] claim 1, i.e., claim 1 is directed to a composition
which is “non-flowable at temperature greater than about 120° F.” Temperatures
“greater than about 120°F” include all temperatures greater than about 120° F,
e.g., 130°F, 140°F, 150°F, 160°F, etc. Claim 24 depends upon claim 1 wherein
“said anti-seize composition is dimensionally stable up to 130°F”. The examiner
is of the position that the term “up to 130°F” includes 0°F -130°F.
Answer, page 6 (emphasis added by Examiner).
According to the specification, the anti-seize compositions “are non-flowable
and dimensionally stable, i.e., they are capable of existing in a self-supporting mass
without migrating at temperatures of at least 70°F (21°C), desirably 120°F (49°C) up
to at least 130°F (55°C).” Specification, [0027]. The specification also states that
“dimensional stability” indicates “that the formulation supports its own weight and
doesn’t change shape under gravitational forces.” Id., [0008]. As we understand it,
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