Appeal 2007-2337
Application 10/437,919
The references set forth below are relied upon by the Examiner as
evidence of obviousness:
Graefe US 3,929,730 Dec. 30, 1975
Heidingsfeld US 5,545,707 Aug. 13, 1996
Pudleiner US 6,022,939 Feb. 8, 2000
I. Claims 11-15 and 17-24 stand rejected under 35 U.S.C. § 112, second
paragraph, as indefinite.
II. Claims 1-15, and 17-24 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Graefe, Heidingsfeld, or Pudleiner.
The rejected claims under 35 U.S.C. § 112, second paragraph.
The first issue presented is: Has the Examiner established that the
subject matter of claims 11-15 and 17-24 does not meet the requirements of
35 U.S.C. § 112, second paragraph? We answer this question in the
negative.
The Examiner contends that the subject matter of claims 11-15 and
17-24 is indefinite in scope because “Appellant has failed to specify the
basis for the claimed parts by weight values. It is unclear if the parts by
weight are based on the weight of the polyol, the prepolymer reactants, or
the composition as a whole.” (Answer 3).
“The legal standard for definiteness [under the second paragraph of
35 U.S.C. § 112] is whether a claim reasonably apprises those of skill in the
art of its scope” In re Warmerdam, 33 F.3d 1354, 1361, 31 USPQ2d 1754,
1759 (Fed. Cir. 1994). The inquiry is to determine whether the claim sets
out and circumscribes a particular area with a reasonable degree of precision
and particularity. The definiteness of the language employed in a claim
must be analyzed not in a vacuum, but in light of the teachings of the
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