(dissenting), with whom BALDWIN, Judge, joins.
I respectfully disagree with the conclusion reached by the majority in part I of its opinion. Unlike the majority, I would affirm the rejection of all claims under 35 U.S.C. § 112, second paragraph. In my opinion appellants have not overcome the contention of the Patent Office that the terms “5-pyrazolone coupler radical” and “open-chain ketomethylene coupler radical” are indefinite. Since I also find myself in disagreement with some of what is said in parts II-V of the majority opinion, I would affirm the decision of the board on this ground alone and not reach the issues discussed by the majority in parts II-V.
As pointed out in the majority opinion, we have here a situation where the Patent Office contends that certain chemical terms are indefinite and appellants contend they are not. Based on two United States patents, cited by appellants for their use of the terms in question, and on two chemical texts which are not of record, the majority finds that the terms have a definite meaning to one of ordinary skill in the photographic art. In my opinion there is no real evidence of record to support this conclusion.
In regard to the two cited U. S. patents, I agree with the majority that “these patents are not weighty evidence of the art recognition of the controverted terms,” since (1) there is no showing that the question of art recognition of the terms ever came up during the prosecution of these patent applications, and (2) both patents are assigned to the same assignee as the present application and were copending with the present application, which negates any presumption from the use of the terms in these patents that the terms are known to the art as a whole.
Since these two patents are not convincing of the art recognition of the controverted terms, there is no persuasive evidence before the court of the art recognition of those terms. The chemical texts cited in the majority opinion cannot aid appellants in this case. These texts are not of record and the majority has quite properly refused to take judicial notice of them. By considering the texts anyway, the majority has clearly gone beyond that which is authorized by 35 U.S.C. § 144, which requires that this court “hear and determine * * * appeal [s] on the evidence produced before the Patent Office.”
I think from the foregoing analysis that it is apparent that there remains the situation where one side argues that the terms are indefinite, the other side argues that they are not, and there is no persuasive evidence either way. Under the circumstances, I would place the burden on appellants to show that the terms in question have a definite art-recognized meaning. When an examiner rejects claims for indefiniteness under § 112 in situations such as this, it seems to me he is really saying what the majority evidently would like to have seen more explicitly spelled out, i. e., that he thinks the use of the terms makes the claims indefinite and would like to see examples of their use in literature in the art. An examiner can do little more since it is nearly impossible as a practical matter to show that the terms are indefinite. That is, an examiner cannot cite patents, textbooks, dictionaries, etc. to show that the terms are indefinite since the mere absence of the terms from the reference materials means little and if the terms are present in the reference materials, it would indicate some art recognition unless, perchance, the terms are listed with the notation that they have no definite art-recognized meaning. On the other hand, the fact that the terms have a definite art-recognized meaning is much more easily shown. For example, literature references which use the terms can be cited, dictionary and encyclopedia definitions (such as those cited in the majority opinion) can be brought forth, and affidavits (such as the one tendered by appellants but not entered of record) can be submitted.
Therefore, when challenged as to the definiteness of the terms “5-pyrazolone *599coupler radical” and “open-chain keto-methylene coupler radical,” I think it was incumbent upon appellants to show that the terms do have an art-recognized meaning. This they have clearly failed to do. As noted previously, the only evidence of record tending to show the art recognition of the terms is found in the two U. S. patents which were cited by appellants, and the relevancy of these patents has been questioned by everyone including the majority. Since there is no other evidence of record to support appellants’ position, I do not think it proper for the court to do for appellants (by finding reference to the terms in chemical texts) that which they should have done for themselves. To do so requires reliance on material which is clearly outside of the record in this case and which is not subject to being judicially noticed. This is not permissible under 35 U.S.C. § 144.
For the foregoing reasons, I would affirm the decision of the board.