Appeal No. 2001-0258 Page 4
Application No. 08/821,978
The legal standard for definiteness is whether a claim
reasonably apprises those of skill in the art of its scope. See
In re Warmerdam, 33 F.3d 1354, 1361, 31 USPQ2d 1754, 1759 (Fed.
Cir. 1994). Recognizing, as the examiner does (answer, p. 5)
that the inclusion of alternative terminology in a claim does not
necessarily render the claim indefinite (See In re Gaubert, 524
F.2d 1222, 1227, 187 USPQ 664, 667-68 (CCPA 1975), we also share
the examiner's view that, in this instance, the use of
alternative claim terminology raises an ambiguity as to the scope
of the claims. For reasons explained in more detail in our new
ground of rejection, infra, in light of appellants' underlying
disclosure, including all of appellants' claims, and in light of
appellants' arguments (brief, pp. 16-21), the claims are
ambiguous as to whether they require a step of or means for
selecting between two alternatives offered by the gaming machine
or whether the claims are generic in that they cover either of
two species2.
2 The first alternative or species is a second chance means which is
linked to the first chance means such that the strategy in playing the first
chance means is dependent on the second chance means and the second species is
a second chance means which is dissociated from the first chance means such
that the strategy in playing the first chance means is independent of the
second chance means.
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