Appeal 2006-2729
Application 10/193,363
the claims is considered as a whole as well as in view of the written
description in the Specification as it would be interpreted by one of ordinary
skill in the art, the claims in fact fail to set out and circumscribe a particular
area with a reasonable degree of precision and particularity, see Moore,
439 F.2d at 1235, 169 USPQ at 238, such that “those skilled in the art would
understand what is claimed when the claim is read in light of the
Specification.” See The Beachcombers, Int’l. v. WildeWood Creative
Prods., 31 F.3d 1154, 1158, 31 USPQ2d 1653, 1656 (Fed. Cir. 1994)
(quoting Orthokinetics, Inc v. Safety Travel Chairs, Inc., 806 F.2d 1565,
1576, 1 USPQ2d 1081, 1088 (Fed. Cir. 1986)); see also In re Warmerdam,
33 F.3d 1354, 31 USPQ2d 1754, 1759 (Fed. Cir. 1994). Indeed, patent
claims must be “sufficiently precise to permit a potential competitor to
determine whether or not he is infringing.” Exxon Research and Eng’g. Co.
v. United States, 265 F.3d 1371, 1375, 60 USPQ2d 1272, 1276 (Fed. Cir.
2001) (citation omitted).
We agree with Appellants’ interpretation of the requirements in the
language of claim 1 for and interaction between the functional material and
the surfactant leading to the formation of composite particles comprising the
same which fall within the stated particles size range in the process
specified. As Appellants point out, the Examiner’s contentions that the
claim language is indefinite are based on enablement issues and not whether
one skilled in the art would understand what is claimed in light of the
Specification. The breadth the Examiner finds in the claim is not indicative
of indefiniteness. Indeed, the claims encompass any and all functional
material and the surfactant falling within the specified definitions of
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