Appeal No. 1998-2043
Application No. 08/606,601
According to the examiner, claims 7-10 are “indefinite and incomplete...for failing to
clearly and completely recite the critical movements of the cassette mounting member and
first guide means [sic; first guiding member].” (Final Rejection, page 3.)
Appellants consider the rejection to be grounded on “undue breadth,” and assert
that the independent claim (7) need not recite the movements of the cassette mounting
member and guide members. (See Brief, pages 9-12.)
The function of claims is (1) to point out what the invention is in such a way as to
distinguish it from the prior art; and (2) to define the scope of protection afforded by the
patent. In re Vamco Mach., Inc., 752 F.2d 1564, 1577 n.5, 224 USPQ 617, 635 n.5 (Fed.
Cir. 1985). The legal standard for definiteness is whether a claim reasonably apprises
those of skill in the art of its scope. In re Warmerdam, 33 F.3d 1354, 1361, 31 USPQ2d
1754, 1759 (Fed. Cir. 1994). The inquiry is merely to determine whether the claims do, in
fact, set out and circumscribe a particular area with a reasonable degree of precision and
particularity. In re Moore, 439 F.2d 1232, 1235, 169 USPQ 236, 238 (CCPA 1971). The
definiteness of the language employed must be analyzed -- not in a vacuum, but in light of
the teachings of the prior art and of the particular application disclosure as it would be
interpreted by one possessing the ordinary level of skill in the pertinent art. Id.
We agree with appellants that the subject matter circumscribed by claim 7 is
reasonably ascertainable, and there is no requirement of any recitation of the “critical
movements,” as the examiner terms them, of the cassette mounting member and first
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