Appeal 2007-1067
Application 10/108,793
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).
Here, the claimed requirement for a copolymer after neutralization
having Atti Compression less than a claimed formula and a Coefficient of
Restitution value within a specified range for the neat copolymer renders the
scope of the claims indefinite in that the Atti Compression and Coefficient
of Restitution values are, by definition, measurements of the properties of a
particular ball or sphere, not the measure of a copolymer property per se, as
claimed. See, e.g., Specification, pp. 12 and 13. Thus, the scope of the
claims is unclear. In this regard, it is not clear how one of ordinary skill in
the art could determine whether a particular E/X/Y copolymer has a unique
Atti Compression and a unique Coefficient of Restitution for the copolymer
itself, rather than for a particular ball made from such a copolymer, such that
a comparison with the specified formula and range, respectively, for these
parameters could be made.2
2 Prior to final disposition of this application, the Examiner should review
the claims of copending application No. 10/230,015 and determine whether
an obviousness-type double patenting rejection is in order. Also, the
Examiner should seek to resolve any inconsistency between the description
of the Atti Compression testing of the Examples as described in this
application with the Atti Compression testing description in the copending
child application. As an additional matter, the Examiner should review the
Specification, as filed, to determine whether there is any direction therein for
specifying an Atti Compression by the formula, specified in the appealed
claims. In this regard, merely because two points define a line does not
5
Page: Previous 1 2 3 4 5 6 7 Next
Last modified: September 9, 2013