Appeal No. 1999-1109
Application No. 08/359,904
The second paragraph of 35 U.S.C. § 112 requires claims
to set out and circumscribe a particular area with a reasonable
degree of precision and particularity. In re Johnson, 558 F.2d
1008, 1015, 194 USPQ 187, 193 (CCPA 1977). In making this
determination, the definiteness of the language employed in the
claims must be analyzed, not in a vacuum, but always 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.
The Examiner's focus during examination of claims for
compliance with the requirement for definiteness of 35 U.S.C.
§ 112, second paragraph, is whether the claims meet the
threshold requirements of clarity and precision, not whether
more suitable language or modes of expression are available.
Some latitude in the manner of expression and the aptness of
terms is permitted even though the claim language is not as
precise as the Examiner might desire. If the scope of the
invention sought to be patented cannot be determined from the
language of the claims with a reasonable
degree of certainty, a rejection of the claims under 35 U.S.C.
§ 112, second paragraph, is appropriate.
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