Appeal 2007-0003
Application 10/217,990
After consideration of the present record, we determine that a person
of ordinary skill in the art would have realized, just as the Examiner in the
statement of the rejection, that materials transmit electromagnetic energy.
(Answer 4). The Specification includes lists of representative materials
suitable for use in the invention. (Specification 5-7). There is nothing
inherently wrong with defining some part of an invention in functional terms
or based upon specified properties. The identification of properties and
functional language does not, in and of itself, render a claim improper. In re
Swinehart, 439 F.2d 210, 213, 169 USPQ 226, 229 (CCPA 1971). Thus, we
determine that the claims reasonably apprise those of ordinary skill in the art
of their scope. Accordingly, we reverse the Examiner’s § 112, second
paragraph, rejection of claims 1-16 as indefinite.
The second issue presented is: Has the Examiner established that the
subject matter of claims 17 and 18 does not meet the requirements of
35 U.S.C. § 112, second paragraph? We answer this question in the
affirmative.
We affirm the rejection of claims 17 and 18 for the reasons set forth in
the answer. The Examiner notes that the Specification only includes the
capital “K” designation in the formula (Specification [0023]). The Appellant
has failed to specifically address the Examiner's criticism of the formula
presented in claims 17 and 18. Accordingly, we affirm the Examiner’s §
112, second paragraph, rejection of claims 17 and 18.
III. Claims 1-7, and 11-16 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Botzem and Schutz.
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