Appeal 2007-1521
Application 10/694,584
agents" to be5, i.e., what aging processes are counteracted, and, to the extent
understood, why. The second part comprises a credible showing that the
Becke metal complexes do not have those properties. (In the alternative, the
second part might be a credible explanation of why the Becke metal
complexes could not reasonably be expected to have those properties,
although this might be more difficult in light of the silence of the
specification as to what those properties are.)
The first showing, i.e., that "anti-aging agent" is a term of art having a
reasonably well defined meaning to those skilled in the relevant arts, might
also function as an effective rebuttal to the Examiner's position that the
recitation of the anti-aging property is not entitled to any patentable weight.
In the absence of such a showing, however, the Examiner has not been
shown to have erred reversibly.
In a peripheral claiming system, the burden of distinguishing
compositions that meet all the express structural limitations recited in a
claim properly falls on the applicant. This is because the applicant is
charged with the responsibility of defining the subject matter it wishes to
claim. See, e.g., Morris, 127 F.3d at 1056, 44 USPQ2d at 1029 ("We
decline to attempt to harmonize the applicants' interpretation with the
application and prior art. Such an approach puts the burden in the wrong
place. It is the applicants' burden to precisely define the invention, not the
PTO's. See 35 U.S.C. § 112 ¶ 2 ("The specification shall conclude with one
or more claims particularly pointing out and distinctly claiming the subject
5 The silence of the specification as to the functions and properties of "anti-
aging agents" raises the bar somewhat, as the appearance of a post-hoc
rationalization must be avoided.
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