Ex Parte Proll et al - Page 4

                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.)                      
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