Appeal 2007-1629
Application 10/138,337
endeavor, in future enterprise, to approach the area circumscribed by the
claims of a patent, with the adequate notice demanded by due process of
law, so that they may more readily and accurately determine the boundaries
of protection involved and evaluate the possibility of infringement and
dominance.” In re Hammack, 427 F.2d 1378, 1382, 166 USPQ 204, 208
(CCPA 1970).
Claim 1 is directed to a process for purifying TEDA involving steps in
which TEDA is vaporized, passed into a liquid solvent, crystallized from the
solvent, and extracted. The claim further recites that “the TEDA-depleted
mother liquor obtained after extraction is returned to the process and reused
as organic solvent into which gaseous TEDA is passed.” It also states that,
in addition or in the alternative, “the TEDA-enriched extractant which has
been used for the extraction is returned to the process, and reused for
extraction.”
The Examiner contends that the phrase “returned to the process” is
indefinite. The Examiner argues: “In one case, a liquor is being returned
[to the process], in the other case, an extractant is being returned. A thing
cannot be returned to a process. It can be returned to a location such as a
vessel or it can be returned to a filtrate. It can be returned to original
feedstock, etc. but not to a process itself” (Answer 3).
In our opinion, the phrase “returned to the process” in each instance
does not make the scope of the claim unclear. In the first instance, the
phrase “returned to the process” is qualified by stating that the TEDA-
depleted mother liquor is “reused as organic solvent,” making it clear that
the liquor is to be used in the same process recited in the preceding steps of
the claim, i.e., in which the TEDA is vaporized, passed into a liquid solvent,
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