Wednesday, October 23, 2013

Appellant wins on 112 but loses on 103


As to 112 rejections:

Rejection under 35 U.S.C. §112,
first paragraph,
written description requirement
Appellant has persuasively argued the
Examiner reversibly erred in finding
the claim 30 limitation “said deoxidizing me
tal constituting at least about 1 weight
percent of said puck or briquett
e” lacks written descriptive support (
Ans. 5).
Appellant directs us to page 5, lines 6-
8 of the Specification (filed Feb. 16, 2007)
wherein, contrary to the Examiner’s contention (
Ans. 13), explicit support for
the phrase “at least
1 weight percent” (claim 30
(emphasis added)) appears.
App. Br. 7-8.) Accordingly, we do not
sustain the rejection of claims 30, 31,
and 36-49 under 35 U.S.C. §112,
first paragraph, as failing to comply with the
written description requirement.
Rejection under 35 U.S.C
. §112, second paragraph
Appellant has persuasively argued th
e Examiner reversibly erred in
determining claim 30 is indefinite due to the term “about” in the phrase “said
deoxidizing metal constituting at least about
1 weight percent of said puck or
briquette” (Ans. 5). A claim satisfies th
e definiteness requirement of 35 U.S.C. §
112, second paragraph, when one skille
d in the art understands the claim
parameters as read in li
ght of the specification.
BJ Servs. Co. v. Halliburton
Energy Servs.
, 338 F.3d 1368, 1372 (Fed. Cir.
2003). The Examiner has not
clearly explained why one of ordinary
skill in the art would not have been
reasonably apprised of the scope of the cl
aim as a result of th
e claim term “about.”
Cf. Accentra, Inc. v. Staples, Inc.
, 500 Fed.Appx. 922, 930
(Fed. Cir. 2013) (non-
precedential) (explaining the term “about” is not indefinite if it can be understood
in the context of the technology).
Appellant has also persuasively argued (
App. Br. 8) the Examiner
reversibly erred in dete
rmining dependent claims
55, 56, and 59 encompass a
lower limit of 0% for the liquid material
and calcium compound and, therefore, are
indefinite because they are broader in sc
ope than independent claim 52 wherein the
lower limits recited for the
same components exceed 0% (
Ans. 5). As argued
by Appellant (
Reply Br. 3), 35 U.S.C. § 112, fourth paragraph, provides that “a
claim in dependent form shall contain a re
ference to a claim previously set forth
and then specify a further limitation of
the subject matter claimed.”


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