Appeal 2007-1822
Application 10/482,191
Appellants respond:
1) The “term ‘at least’ means one or more” and is “clear” in all
instances (Appeal Br. 9);
2) “The gist of the presently-claimed invention lies in step D, and is
not limited to particular starting materials and therefore, particular
intermediate or final products” (id. at 10);
3) “[W]hile issues of classification . . . are irrelevant to whether
claims comply with an applicable statute, nevertheless, there are always
miscellaneous subclasses in classification groups when claim subject matter
is not otherwise specifically provided for” (id.); and
4) “There is no question of utility” of “partial oxidation products, one
or more ammoxidation products, or both, of at least one olefinic
hydrocarbon” as examples of “such products are notoriously known” (Reply
Br. 2).
We frame the definiteness issue as follows:
Does Appellants’ claim 1 particularly point out and distinctly claim
the subject matter Appellants regard as their invention, or is it indefinite for
the reasons identified by the Examiner?
DISCUSSION
The second paragraph of § 112 requires the specification of a patent to
“conclude with one or more claims particularly pointing out and distinctly
claiming the subject matter which the applicant regards as his invention.” 35
U.S.C. § 112 ¶ 2. “To satisfy this requirement, the claim, read in light of the
specification, must apprise those skilled in the art of the scope of the claim.
Moreover, claims need not ‘be plain on their face in order to avoid
condemnation for indefiniteness; rather, what [this court has] asked is that
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