Appeal No. 2000-0293 Page 4
Application No. 08/766,862
The examiner's focus during examination of claims for
compliance with the requirement for definiteness of 35 U.S.C.
§ 112, second paragraph, is whether the claims meet the threshold
requirements of clarity and precision, not whether more suitable
language or modes of expression are available. Some latitude in the
manner of expression and the aptness of terms is permitted even
though the claim language is not as precise as the examiner might
desire. If the scope of the invention sought to be patented cannot
be determined from the language of the claims with a reasonable
degree of certainty, a rejection of the claims under 35 U.S.C. § 112,
second paragraph, is appropriate.
As noted by the Court in In re Swinehart, 439 F.2d 210, 212-
13, 160 USPQ 226, 229 (CCPA 1971), a claim may not be rejected solely
because of the type of language used to define the subject matter for
which patent protection is sought.
With this as background, we analyze the specific rejections
under 35 U.S.C. § 112, second paragraph, made by the examiner of the
claims on appeal. The examiner states that:
Regarding claims 1, 8 and 14, the phrase “such
as” renders the claims indefinite because it is
unclear whether the limitations following the
phrase are part of the claimed invention. . .
In claim 2, the phrase “plate-like” is
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 Next
Last modified: November 3, 2007