Appeal 2007-1822
Application 10/482,191
oxidation, ammoxidation, or both, zone B and then recycling
at least a portion of the at least one paraffinic hydrocarbon A
present in the product mixture B of the oxidation,
ammoxidation, or both, zone B, as paraffinic recycle
hydrocarbon A, not via the reaction zone A, into the
oxidation, ammoxidation, or both, zone B.
The Examiner has rejected claims 1-12 under 35 U.S.C.
35 U.S.C. § 112, ¶ 2, as being indefinite for failing to particularly point out
and distinctly claim the subject matter which applicants regard as their
invention.
PATENTABILITY UNDER § 112, ¶ 2
The Examiner found the second paragraph of 35 U.S.C. § 112 is not
met for the following reasons:
1) “Claim 1 is replete with the phraseology ‘at least one’ rendering the
claim unclear and confusing” (Answer 3);
2) Claims 1-10 do not recite products (id.);
3) “The ‘term[] ‘hydrocarbons’ embrace[s] the entire text of organic
chemistry’ and thus it “is not possible to ascertain the metes and bounds of
the claims” (id. at 4) or to know “the utility of the claims” 3 (id. at 5); and
4) Because “the products are not identifiable,” the claims cannot be
classified and the Office cannot “perform its duty in conformance with 35
USC 8 and other relevant statutes.” (Id. at 4-5.)
According to the Examiner: “Had the specification disclose[d]
explicit definitions of olefinic and paraffinic hydrocarbons, the requirement
of 35 USC 112, second paragraph, would have been met” (Answer 4).
3 The Examiner has not entered any utility rejection under either § 112 ¶ 1 or
§ 101. However, in order to avoid piecemeal prosecution, we address the
Examiner’s utility finding and Appellants’ response. (See infra p. 7.)
4
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