Appeal 2007-1822
Application 10/482,191
the claims be amenable to construction, however difficult that task may be.’
Exxon Research & Eng’g Co. v. United States, 265 F.3d 1371, 1375 (Fed.
Cir. 2001).” SmithKline Beecham Corp. v. Apotex Corp., 403 F.3d 1331,
1340, 74 USPQ2d 1398, 1404 (Fed. Cir. 2005) (internal citation omitted).
We agree with the Examiner that an “essential purpose of patent
examination is to fashion claims that are precise, clear, correct, and
unambiguous. Only in this way can uncertainties of claim scope be
removed, as much as possible, during the administrative process.” In re
Zletz, 893 F.2d 319, 322, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989).
However, claim 1 is amenable to interpretation and, if issued, would apprise
the skilled artisan of their scope. Thus, it is not indefinite under § 112 ¶ 2.
The meaning of the language “at least one” is well understood by
those skilled in the art, as it is widely used in claiming. Appellants have not
deviated from its well understood usage.
Furthermore, Appellants’ claimed process for preparing partial
oxidation or ammoxidation products from paraffinic hydrocarbons does not
require Appellants to limit their claim scope to specific paraffinic
hydrocarbons in order to assist the Examiner with the Office’s task of
examination. “Breadth per se is not synonymous with indefiniteness.”
(Reply Br. 2.) In this case, Appellants assert that 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.” (Appeal
Br. 10.) When claim 1 is read in light of the Specification by one skilled in
the art, it would apprise that skilled artisan of its scope. That is all 35 U.S.C.
§ 112 ¶ 2 requires.
6
Page: Previous 1 2 3 4 5 6 7 8 Next
Last modified: September 9, 2013