Appeal No. 96-3512
Application 08/235,623
case, we will not sustain the rejection of claims 1-20 under 35
U.S.C. § 112, first paragraph.
Turning to the rejection of claims 1-20 under 35 U.S.C.
§ 112, second paragraph, the examiner is of the opinion that the
claimed terminology of “major face” and “an energy” (independent
claims 1, 10 and 19) and “substantially near” (claim 20) is
unclear. We will not support the examiner’s position. The
purpose of the second paragraph of § 112 is to basically ensure,
with a reasonable degree of particularity, an adequate notifica-
tion of the metes and bounds of what is being claimed. See In re
Hammack, 427 F.2d 1378, 1382, 166 USPQ 204, 208 (CCPA 1970).
Moreover, as the court stated in In re Moore, 439 F.2d 1232,
1235, 169 USPQ 236, 238 (CCPA 1971), the determination of whether
the claims of an application satisfy the requirements of the
second paragraph of § 112 is
merely to determine whether the claims do, in fact, set
out and circumscribe a particular area with a
reasonable degree of precision and particularity. It
is here where the definiteness of language employed
must be analyzed -- not in a vacuum, but always in
light of the teachings of the prior art and of the
particular application disclosure as it would be
interpreted by one possessing the ordinary level of
skill in the pertinent art. [Emphasis ours; footnote
omitted.]
Noting that the member 30 is depicted in Figs. 8 and 9 as
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