Appeal No. 95-0537
Application No. 08/077,709
“preferential direction” as recited in the claims refers to
the direction in which the claimed c-axes of the film are
aligned (see Brief, p. 19). Compare In re Mattison, 509
F.2d 563, 565, 184 USPQ 484, 486 (CCPA 1975) (use of
“substantially increase” in a claim does not render that claim
indefinite under 35 U.S.C. § 112, second paragraph, since the
phrase does not stand in a vacuum but must be read in light of
the specification and when so read, one skilled in the art can
determine the scope of the claimed invention). Similarly, one
having ordinary skill in the art would have understood "high
temperature superconductive film" to mean a film made of
superconducting material which undergoes a phase transition
from a state of normal electrical resistivity to a
superconducting state at a temperature higher than 30K (see
Specification, p. 1, lines 9-13; Brief, pp. 17-18). See In re
Prater, 415 F.2d 1393, 1404-05, 162 USPQ 541, 550-51 (CCPA
1969) (claim cannot be read in a vacuum, but rather must be
read in light of specification to thereby interpret
limitations explicitly recited in claim). Therefore, the
rejection of claims 1-9 under 35 U.S.C. § 112, second
paragraph, is reversed.
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