Appeal No. 98-0685
Application No. 08/513,529
Under the provisions of 37 C.F.R. § 1.196(b) we make the
following new rejection.
Claims 1, 2 and 5-11 are rejected under 35 U.S.C. § 112,
second paragraph, as being indefinite for failing to
particularly point out and distinctly claim the subject matter
the appellant regards as the invention. Initially, we note
that a decision as to claim indefiniteness requires a
determination whether those skilled in the art would
understand what is claimed. Amgen Inc. v. Chugai2
Pharmaceutical Co., 927 F.2d 1200, 1217, 18 USPQ2d 1016, 1030
(Fed. Cir. 1991). Moreover, the purpose of the second
paragraph of § 112 is to provide those who would endeavor, in
future enterprises, to approach the area circumscribed by the
claims of a patent, with adequate notice demanded by due
process of law, so that they may more readily and accurately
determine the boundaries of protection involved and evaluate
2The function of the claims is (a) to point out what the
invention is in such a way as to distinguish it from what was
previously known, i.e., from the prior art; and (b) to define
the scope of protection afforded by the patent. In re Vamco
Mach. & Tool, Inc., 752 F.2d 1564, 1577 n.5, 224 USPQ2d 617,
625 n.5 (Fed. Cir. 1985).
4
Page: Previous 1 2 3 4 5 6 7 8 9 10 Next
Last modified: November 3, 2007