Ex parte Bobrowski

Informative decision only: persuasive authority, not binding precedent. When claim scope is so unclear, even in light of the specification, that applying prior art would require "speculation as to the meaning of the terms employed and assumptions" about scope, the Board does not reach the § 102 or § 103 rejections. Instead it reverses them pro forma and enters a new 37 C.F.R. § 41.50(b) ground of rejection under 35 U.S.C. § 112, second paragraph. Here, claims that recited a UV-absorbency reduction relative to "unextracted plant material" were indefinite because the baseline was undefined. No prior Board precedent is named as directly addressed; the Board relies on In re Steele (CCPA 1962), which the USPTO listing also associates with the decision. For the examiner, a prior-art rejection cannot be sustained when claim scope cannot be determined, but the Board will enter its own indefiniteness rejection. The Board also held the examiner wrong to give the "1 mg/mL" limitation no patentable weight. For the applicant, reversal of the art rejections is not a clean win: the new ground is not final for judicial review, and within two months the applicant must either reopen prosecution by amendment or new evidence, or request rehearing, or the appeal is terminated as to the rejected claims. The Board relied on CCPA authority (In re Steele, In re Moore) and on Federal Circuit authority (In re Morris) that puts the burden of precisely defining the invention on the applicant. LEGAL TEST OR STANDARD: Definiteness under 35 U.S.C. § 112, second paragraph, is analyzed 'not in a vacuum, but always in light of the teachings of the prior art and of the particular application disclosure as it would be interpreted by one possessing the ordinary skill in the pertinent art' (In re Moore). The Board construed the claim terms first, using the specification and a dictionary definition of 'extract'. It then asked whether a skilled artisan could determine claim scope. If not, the claims are indefinite and the art rejections are not reached. TRIGGERING FACTS: Independent claims 10 and 13 recited an extract of Croton plant material with 'reduced UV absorbency of about at least 4.3' between 390 and 430 nm relative to 'unextracted plant material.' The claims did not say what the baseline was (latex, leaf, bark and so on), gave no antecedent basis, and gave no amount, concentration or preparation method. They also did not define the unit or meaning of '4.3,' and the examiner had rejected under §§ 102 and 103 over prior art. The dependent claims that gave absorbance values stayed indefinite because they lacked baseline information. KEY QUOTE: "As written, the Appellant's independent claims 10 and 13 are indefinite, even in light of the specification." (p. 10) PRIOR PRECEDENT AFFECTED: No prior Board precedential or informative decision is directly affected. The Board follows In re Steele, 305 F.2d 859, 862 (CCPA 1962), that a rejection should not rest on speculation and assumptions about claim meaning. It also cites In re Moore, 439 F.2d 1232, 1235 (CCPA 1971), and In re Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997). PRACTICE TIP: When claims define a property by comparison to a reference material, state the baseline expressly in the claim: its identity, its concentration, its preparation, and the units or meaning of the measured value. If the Board enters a § 41.50(b) new ground, calendar the two-month deadline and choose between reopening prosecution and requesting rehearing.