Appeal No. 95-1217
Application 08/039,674
provide an adequate explanation as to why it would require
undue
experimentation for a person of ordinary skill in the art to
determine these values. Further, the Examiner has failed to
explain why a person of ordinary skill in the art would be
unable to make and use the claimed invention without knowing
the constant C. The rejection is therefore reversed.
2. The rejections under 35 U.S.C. § 112, ¶ 2
Analysis of 35 U.S.C. § 112, second paragraph, should
begin with the determination of whether the claims set out and
circumscribe the particular area with a reasonable degree of
precision and particularity; it is here where definiteness of
the language must be analyzed, not in a vacuum, but always in
light of teachings of the disclosure as it would be
interpreted by one possessing ordinary skill in the art. In
re Johnson, 558 F.2d 1008, 1015, 194 USPQ 187, 193 (CCPA
1977), citing In re Moore, 439 F. 2d 1232, 1235, 169 USPQ 236,
238 (1971). "The test for definiteness is whether one skilled
in the art would understand the bounds of the claim when read
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