Appeal No. 1999-2264
Application No. 08/549,074
cylinder (6)” is recited.[2]
We do not consider this rejection to be well taken.
A claim is in compliance with the second paragraph of § 112
if it 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). In our view, the present claims meet this criterion.
Even assuming that the limitation quoted by the examiner is
functional, that does not render the claims indefinite per se,
because “[t]here is nothing intrinsically wrong in defining
something by what it does rather than by what it is.” In re
Echerd, 471 F.2d 632, 635, 176 USPQ 321, 322 (CCPA 1973). Here,
we are of the opinion that the language of appellants’ claims 1
to 12 is such as to reasonably apprise those of ordinary skill in
the art of their scope.
Rejection (3) therefore will not be sustained.
Rejections (1) and (2)
These rejections will be considered together since the
questions of whether a specification provides an enabling
disclosure under § 112, first paragraph, and whether an
2
2The quotation is taken from claim 1, the only independent
claim, except that the examiner has added the numeral “(6)” at
the end.
3
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