Appeal No. 1998-1096
Application No. 08/415,399
1970). Here, the language “reduce incident thermal neutrons
by a factor of about 2 or more” limits the structure of the
thermal neutron absorbing layer since, as disclosed in
Appellants’ specification, the amount of thermal neutrons
incident on the absorbing layer is a function of layer
thickness, and the thermal absorption quality of the layer
material. Since the Examiner has chosen to ignore the claimed
particular reduction factor, no showing on the record exists
as to how Cannella’s shielding layer, which is used in a
scanning mechanism and is designed to be transparent, would
meet the requirements of claim 5.
In view of the above discussion, it is our opinion that,
since all of the claim limitations are not present in the
disclosure of Cannella, the Examiner’s 35 U.S.C. § 102(b)
rejection of independent claim 5, as well as claim 6 dependent
thereon, can not be sustained.2
2In the “Response to arguments” portion at page 4 of the
Answer, the Examiner asserts the indefiniteness of the claim
language “ . . . of about 2 or more.” Since no rejection has
been made of record by the Examiner, we decline to rule on the
merits of the Examiner’s contention. We do note, however,
that the breadth of a term should not be equated with
indefiniteness. In re Miller, 441 F.2d 689, 693, 169 USPQ
597, 600 (CCPA 1971).
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