Appeal 2007-1610
Application 10/955,833
as the naturally occurring mixture of compounds” (Br. 11). However,
purified claim ethyl 3-mercaptobutyrate is not what is presently claimed.
Thus, we conclude that the phrase “provided that the ethyl 3-
mercaptobutyrate is not part of a naturally occurring mixture of compounds
or a part of a synthetic mixture of compounds which is the same as the
naturally occurring mixture of compounds” is new matter to the
Specification in violation of the written description requirement of 35 U.S.C.
§ 112, first paragraph. The rejection of claims 7-12 is affirmed.
Indefiniteness rejection under § 112, second paragraph
There are three rejections at issue in this appeal for lack of
definiteness under 35 U.S.C. § 112, second paragraph. First, claims 7-12
stand rejected as indefinite because “it is unclear exactly what constitutes, in
the context of the invention, ‘a naturally occurring mixture of compounds.’”
(Answer 7.) Related to this issue, the Examiner states that if the claims are
interpreted to exclude any mixture of naturally occurring compounds, “the
compositions specified in claims 10-12 lack antecedent basis” because they
would exclude Appellants’ “most preferred embodiments: the beverage,
confection and chewing gum” (Answer 9-10). Third, the Examiner states
that claim 7 is indefinite “[b]ecause a naturally occurring mixture and a
synthetic mixture are not the same, they cannot as a matter of fact properly
be characterized as such” (Answer 13).
We reverse the rejections. The phrase “naturally occurring mixture of
compounds,” when properly interpreted, means a “mixture of compounds”
that can be found in nature (see supra at p. 3-4). This is not indefinite nor
does it lead claims 10-12 to lack antecedent basis.
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