Appeal No. 2000-0491 Page 3
Application No. 08/906,855
respective positions articulated by the appellants and the examiner. As a consequence of
our review, we make the determinations which follow.
The Rejection Under Section 112
There are two portions to the examiner’s rejection under the second paragraph of
35 U.S.C. § 112. The first is that the phrase “improve superconductivity relative to the
superconductivity which would result from a single wire-drawing and a single heat-
treatment,“ which appears in the last few lines of independent claims 97 and 118, is vague
and ambiguous. We do not agree. It is clear from the specification that the appellants
consider their invention to be an improvement over those methods in the prior art that
utilize a single wire-drawing step and a single heat-treatment step. The recitation in the
claims with which the examiner takes issue is merely a conclusionary statement that sets
forth the results that flow from the inventive method as compared to a method in which
there is only a single wire-drawing and a single heat-treatment.
The second point of indefiniteness raised by the examiner is that it is not clear
whether the “single wire drawing” and “single heat-treatment” are one of those recited in
the steps of these two claims, or are different therefrom. This is related to the first portion
of the Section 112 rejection, and we also do not agree that this language renders the
claims indefinite. Rather, it is clear to us from the description of the method set out in the
specification, and in the portions of the claims which precede the language here in issue,
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