Appeal No. 1996-3078
Application 08/184,417
examiner rejecting claims 1 to 29 on appeal under 35 U.S.C. § 103. While we
cannot say that there is not better prior art available than that applied by the examiner, we can say that
the art relied upon does not support the rejection.
For the reasons generally set forth by appellants, we will reverse the decision of the examiner
rejecting claims 1 to 29 under 35 U.S.C. § 112, second paragraph, and we will reverse the decisions of
the examiner rejecting claims 1 to 29, and 8 and 21, under 35 U.S.C. § 103.
Rejection of Claims 1 to 29 Under 35 U.S.C. § 112, Second Paragraph:
We turn first to appellants’ arguments (Brief, pages 7 to 8) that all of the claims on appeal are
definite and properly point out and distinctly claim the subject matter regarded as the invention and that
the examiner’s rejection under 35 U.S.C. § 112, second paragraph, is in error. We agree with
appellants. With respect to 35 U.S.C. § 112, second paragraph, it is to be noted that to comply with
the requirements of the cited paragraph, 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 and the teachings of
the prior art as it would be by the artisan. Note In re Johnson, 558 F.2d 1008, 1015, 194 USPQ 187,
194 (CCPA 1977) and In re Moore, 439 F.2d 1232, 1235, 169 USPQ 236, 238 (CCPA 1971).
Breadth of a claim is not to be equated with indefiniteness. If the scope of the subject matter embraced
by the claim is clear, then the claims comply with 35 U.S.C. § 112, second paragraph. See MPEP §
2173.04. In this case, we find that although the claims on appeal are very broad they are reasonably
5
Page: Previous 1 2 3 4 5 6 7 8 9 Next
Last modified: November 3, 2007