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Ex parte BEACHY - Page 2Legal Research Home > Board of Patent Appeals and Interferences > 1997 > Ex parte BEACHY - Page 2
Appeal No. 94-4377
Application 07/789,738
Claims 1 through 24 stand rejected under 35 U.S.C. § 112,
second paragraph, as being indefinite for failing to particularly
point out and distinctly claim the subject matter which the
appellants regard as the invention.2
Having given careful consideration to the entire record
which includes, inter alia, the appellants’ Brief (Paper No. 23)
and the examiner’s Answer (Paper No. 24), we find ourselves in
substantial agreement with the appellants’ position.
Accordingly, we reverse the rejection.
It is well established that claims in an application are to
be given their broadest reasonable interpretation consistent with
the specification, and that the claim language should be read in
light of the specification as it would be interpreted by one of
ordinary skill in the art. In re Sneed, 710 F.2d 1544, 1548, 218
USPQ 385, 388 (Fed. Cir. 1983); In re Moore, 439 F.2d 1232, 1235,
2This is the only rejection presented in the examiner’s
Answer and, accordingly, it is the only issue which we will
address. We direct the appellants’ attention to 37 CFR
§ 1.191(a) which states that appeals may be made to this Board
for any claims which have been twice rejected or which have been
given a final rejection (§1.113). The issue, raised in the
appellants’ Brief, of the propriety of the introduction of the
full citation of a scientific journal publication into the
specification because in the examiner’s view, it constitutes the
addition of new matter under 35 U.S.C. § 132, does not include
the rejection of any of the pending claims.
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