Appeal No. 1999-1169
Application No. 08/442,441
Therefore, the prior art rejection must fall because it is
necessarily based on speculative assumption as to the meaning
of the claims. See In re Steele, 305 F.2d 859, 862-63, 134
USPQ 292, 295 (CCPA 1962). It should be understood, however,
that our decision in this regard is based solely on the
indefiniteness of the claimed subject matter, and does not
reflect on the adequacy of the prior art evidence applied in
support of the rejection.
NEW REJECTION
Claims 2 through 21 and 36 through 57 are rejected under
35 U.S.C. § 112, second paragraph, as failing to particularly
point out and distinctly claim the subject matter the
appellants regard as the invention.
The second paragraph of 35 U.S.C. § 112 requires claims
to set out and circumscribe a particular area with a
reasonable degree of precision and particularity. In re
Johnson, 558 F.2d 1008, 1015, 194 USPQ 187, 193 (CCPA 1977).
In determining whether this standard is met, the definiteness
of the language employed in the claims must be analyzed, not
in a vacuum, but always in light of the teachings of the prior
art and of the particular application disclosure as it would
4
Page: Previous 1 2 3 4 5 6 7 8 9 10 Next
Last modified: November 3, 2007