Appeal 2007-2082
Application 10/795,457
prima facie case has not been adequately rebutted by Appellant’s arguments.
Therefore we AFFIRM the rejections under § 103(a) over Wada, Morrell, or
Hoshino, essentially for the reasons stated in the Answer, as well as those
reasons set forth below. Accordingly, the Examiner’s decision to reject the
claims on appeal is AFFIRMED.
A. The Rejection under § 112, ¶2
The legal standard for definiteness under paragraph two of 35 U.S.C.
§ 112 is whether a claim reasonably apprises those of skill in the art of its
scope. See Amgen, Inc. v. Chugai Pharmaceutical Co., Ltd., 927 F.2d 1200,
1217, 18 USPQ2d 1016, 1030 (Fed. Cir. 1991). The definiteness of the
language employed must be analyzed, not in a vacuum, but always in light
of the teachings of the prior art and the application disclosure as it would be
interpreted by one possessing the ordinary level of skill in the pertinent art.
See In re Angstadt, 537 F.2d 498, 501, 190 USPQ 214, 217 (CCPA 1976).
Applying the preceding legal principles to the specific facts of this
appeal, we determine that one possessing the ordinary level of skill in this
art would be able to ascertain if any additional step in the claimed method as
recited in claim 1 on appeal would produce polymerization, and thus be
excluded from the scope of the claim. We determine that the phrase “such
as heating” is merely exemplary, and one of ordinary skill in this art would
have been apprised that the scope of the claim excludes any step which
produces polymerization. Therefore, we find that the claim language
reasonably apprises those of skill in the art of its scope.
For the foregoing reasons, we reverse the rejection of the claims on
appeal under the second paragraph of § 112.
B. The Rejection under § 112, ¶1
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