Appeal No. 97-2723
Application 08/320,091
nothing inherently indefinite with combining method steps and
system elements in a claim, we agree. There are no per se
rules of indefiniteness. Each claim must be considered on its
own merits. A claim must make it clear, however, what subject
matter is encompassed by the claim as well as making clear the
subject matter from which others would be precluded. In re
Hammack,
427 F.2d 1378, 1382, 166 USPQ 204, 208 (CCPA 1970).
Claim 6 purports to be directed to a method, but there
is no active, positive step recited within the claim. After
reciting a plurality of system components which define the
environment of the invention, the “method” is defined by a
wherein clause which describes a property of the system
components. The scope of a method claimed is measured by the
sequence of active, positive steps recited therein. In the
absence of any recited steps, we fail to see how a method has
been properly defined by claim 6. Therefore, claim 6 does not
particularly point out and distinctly claim the invention as
required by 35 U.S.C. § 112.
We now consider the rejections under 35 U.S.C. § 103.
In rejecting claims under 35 U.S.C. § 103, it is incumbent
6
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 Next
Last modified: November 3, 2007