Examiner reversed, reminded that claims “must be read in accordance with the precepts of English grammar”

With a Federal Circuit citation, no less.

In Ex parte Moffat, USSN 15/227,827, the claims on appeal were directed to toner compositions with white colorants.  Independent claim 1 recited, in pertinent part:

  1.  An emulsion aggregation toner having toner particles comprising … one single white colorant consisting of titanium dioxide…

While claim 21, dependent from claim 1, recited:

21.  The toner composition of claim 1, wherein the one single type of white colorant is titanium dioxide having a specific gravity of from 4.0 to 4.3.

In addition to rejections under §103, the Examiner rejected the claims under 35 USC §112, asserting in connection with the latter that the ‘827 specification did not provide written description support for the claimed specific gravity values.  The Examiner further found claim 21 indefinite, alleging that the claim is unclear whether the term “type” modifies “white colorant” or “titanium dioxide.”

The Board disagreed and reversed the Examiner on both §112 rejections.  Specifically, the Board held that Appellant’s submission of vendor publications describing that the commercially available and exemplified grades/types of titanium dioxide exhibited specific gravities within the recited range established that Appellant had possession of the claimed invention.

With respect to the indefiniteness rejection, the Board held:

We agree with Appellant that the word “type” is an adjective for the white colorant…We note that a claim must be read in accordance with the precepts of English grammar.

Citing In re Hyatt, 708 F.2d 712, 715 (Fed. Cir. 1983), bless their hearts.