Interference No. 103,587
fully supported for the same reasons that the claims reciting “determining the size of pluralities
of dots” are fully supported.
Opinion
Katayama’s claims 44-47 are not designated as claims which correspond to the count and,
accordingly, they are not involved in this proceeding. Thus, to the extent that Levien moves for
judgment as to claims 44-47, the motion is dismissed.
The question of Katayama’s support for its now amended claims 32-41 is dismissed
because these claims have been found unpatentable under 35 U.S.C. § 112, second paragraph, as
indefinite. See the third and fifth paragraphs under Substitution of a New Count and
Patentability of Newly Amended Claims, above. An analys is of the patentability of claims under
35 U.S.C. § 112, first paragraph, is reached after it has been determined that the claims are
particular and definite. In re Moore, 439 F.2d 1232, 1235, 169 USPQ 236, 238-39 (CCPA
1971).
Levien’s position that the case of In re Spina, 975 F.2d at 856, 24 USPQ2d at 1144, is
controlling on the issue of patentability of Katayama’s claims, and that the claims must be
interpreted in light of the file history of its patent is not well-taken. In Rowe v. Dror, 112 F.3d
473, 42 USPQ2d 1550 (Fed. Cir. 1997), a case like the one before us because it involved an issue
of patentability raised under 37 CFR § 1.633(a), the court indicated that section 1.633(a) allows
the U.S. Patent and Trademark Office (PTO) to consider the patentability of each application’s
claims as if the application stood alone. According to the court, under this situation, the PTO
properly interprets a claim in light of the host disclosure, just as it would during ex parte
prosecution. In the second footnote of Rowe, the court stated that Spina, unlike the case before
it, did not involve a Rule 633(a) motion, and that the change of April 21, 1995 to the rule did not
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