Appeal No. 95-4356
Application 08/133,821
determine an assigned object as the one of
said plurality of objects assigned said
icon." However, it is unclear to the
examiner what the applicant means by "to
determine an assigned object as the one of
the plurality of objects assigned said
icon." Should the claim be read as
"testing said selection to determine an
assigned object from the one of the
plurality of objects assigned said icon?"
Clarification is required. [answer, page
5].
Appellants argue that "one skilled in the art would understand
the claimed step as requiring a determination of which object
was assigned the icon selected by the user" [brief, pages 8-
9].
The general rule is that a claim must set out and
circumscribe a particular area with a reasonable degree of
precision and particularity when read in light of the
disclosure as it would be by the artisan. In re Moore, 439
F.2d 1232, 1235, 169 USPQ 236, 238 (CCPA 1971). Acceptability
of the claim language depends on whether one of ordinary skill
in the art would understand what is claimed in light of the
specification. Seattle Box Co. v. Industrial Crating &
Packing, Inc., 731 F.2d 818, 826, 221 USPQ 568, 574 (Fed. Cir.
1984).
5
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007