Appeal No. 1997-2646
Application 08/103,089
that the claims “require the removal [of a volume] ‘being of a
size enabling resolve by adjacent healthy ocular lens
tissue’.” Based on these assumptions, the Examiner concludes
that a conflict in claim language exists in that: (1) claim
language fails to recite a step of removal; (2) the “removed”
tissue is then restored to normal, or resolved, while it is
“apparently now outside of the lens.” 3
On page 6 of the reply brief, Appellants argue that “[the
language at issue] distinctly claims the subject matter which
the Appellants regard as the invention. The Appellants have
not claimed a step of ‘ablating’ by laser, but a step of
focusing and pulsing at a volume to be removed, with such
removal being effected by adjacent tissues.” We are directed
by appellants to page 23, lines 10-12, of the specification
for support.
Analysis of 35 U.S.C. § 112, second paragraph, should
begin with the determination of whether claims set out and
circumscribe the particular area with a reasonable degree of
precision and particularity; it is here where definiteness of
3 See page 2 of answer mailed August 17, 2000 (hereinafter
paper no. 28).
4
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