Ex parte O'ROURKE - Page 5




          Appeal No. 1996-0951                                       Page 5           
          Application No. 07/880,793                                                  


               Regarding the definiteness of claims 1, 2, 4, and 20-22,               
          the appellant argues, “the term ‘message’ should be                         
          interpreted as human language words such as words of text                   
          ....”  (Appeal Br. at 5.)  In response, the examiner opines,                
          “[i]t is not clear just what is claimed in regard to                        
          ‘message’.”  (Examiner’s Answer at 5.)                                      


               We cannot find that the claims do not particularly point               
          out and distinctly claim the limitation of “messages.”  The                 
          test for  the definiteness of a claim is whether one skilled                
          in the art would understand the bounds of the claim when read               
          in light of the specification.  If the claim read in light of               
          the specification would reasonably apprise one so skilled of                
          the scope of the invention, 35 U.S.C. § 112 demands no more.                
          Miles Labs., Inc. v. Shandon Inc., 997 F.2d 870, 875, 27                    
          USPQ2d 1123, 1126 (Fed. Cir. 1993).                                         


               Here, the specification describes messages as follows.                 
                    The message list contains only the relevant                       
               messages for the particular feature (window/control                    
               etc.) which has been selected.  If the currently                       
               selected item is a window the messages relating to                     
               windows (WM_****) are added to the list.                               







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