Appeal No. 2001-2200
Application No. 09/286,328
Section 112, second paragraph rejection
Claims 1-45 are rejected under 35 U.S.C. § 112, second paragraph, "as being
incomplete for omitting essential structural cooperative relationships of elements, such
omission amounting to a gap between the necessary structural connections." (Answer
at 4.)
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.
In our opinion, the examiner's stated concerns with respect to lack of specificity
do not demonstrate that the scope of the claims cannot reasonably be ascertained. For
example, with respect to instant claim 30, a surface acoustic wave device having a
piezoelectric substrate and an electrode having two or more aluminum-copper alloy
-5-
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007