1. A U.S. patent application discloses a first embodiment of an invention, a composition
made of known materials in equal amounts by weight of A, B, and C. The application discloses
a second embodiment of the invention comprising equal amounts by weight of A, B, and C, and
an effective amount of D, a known material, to reduce excess moisture from the composition.
The application also discloses a third embodiment of the invention comprising equal amounts by
weight of A, B, and C, and an effective amount of D to reduce the acidity of the composition.
The application fully discloses guidelines for determining an effective amount of D to reduce
excess moisture from the composition, and determining an effective amount of D to reduce the
acidity of the composition. The application discloses that the amount of D needed to reduce
excess moisture from the composition differs from the amount of D needed to reduce the acidity
of the composition. Which of the following claims, if included in the application, provides a
proper basis for a rejection under 35 U.S.C. § 112, second paragraph?
(A) Claim 1. A composition comprising: equal amounts by weight of A, B, and C, and
an effective amount of D to reduce the acidity of the composition.
(B) Claim 1. A composition comprising: equal amounts by weight of A, B, and C, and
an effective amount of D.
(C) Claim 1. A composition comprising: equal amounts by weight of A, B, and C, and
an effective amount of D to reduce excess moisture from the composition.
(D) Claim 1. A composition comprising: equal amounts by weight of A, B, and C.
(E) None of the above.
1. ANSWER: (B) is the correct answer. 35 U.S.C. § 112, second paragraph and MPEP
§ 2173.05(c)(III). The claim presented in (B) is improper as “an effective amount” has been held
to be indefinite when the claim fails to state the function that is to be achieved and more than one
effect can be implied from the specification. In re Fredericksen 213 F.2d 547, 102 USPQ 35
(CCPA 1954). It is unclear whether “an effective amount” in (B) is an effective amount to
reduce acidity or an effective amount to reduce moisture. The claims presented in (A) and (C)
find support in the disclosure, which provides guidelines for determining “an effective amount”
for each of the claims in (A) and (C). MPEP § 2173.05(c)(III). The claim presented in (D) is not
indefinite, given that A, B, and C are known materials as set forth in the question and the
composition can be determined by the claim language. (E) is incorrect because (B) is correct.
