Appeal No. 1998-3026
Application No. 08/531,613
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.
With these guidelines in mind, we conclude that claim 1, being in contradiction to
the disclosed invention, fails to pass muster under 35 U.S.C. § 112, second paragraph.
The claim fails to reasonably apprise those of skill in the art of its scope. Since dependent
claims 2-4 contain at least the limitations of claim 1, we enter the new ground of rejection
under section 112, second paragraph against claims 1-4.
CONCLUSION
The rejections of claims 1-4 under 35 U.S.C. § 102 are reversed.
Claims 1-4 are newly rejected by us under 35 U.S.C. § 112, second paragraph.
This decision contains a new ground of rejection pursuant to 37 CFR §
1.196(b)(amended effective Dec. 1, 1997, by final rule notice, 62 Fed. Reg. 53,131,
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