Appeal No. 2001-2366 Page 3
Application No. 08/926,533
OPINION
In reaching our decision in this appeal, we have given careful consideration to
the appellants’ specification and claims, to the applied prior art references, and to the
respective positions articulated by the appellants and the examiner. As a consequence
of our review, we make the determinations which follow.
New Rejection Entered By The Board
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 ,
considering that, 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. See, for
example, In re Johnson, 558 F.2d 1008, 1015, 194 USPQ 187, 193 (CCPA 1977).
Analyzing the claims in the light of this guidance by our reviewing court has caused us
to conclude that all of the claims on appeal are indefinite. Therefore, pursuant to our
authority under 37 CFR 1.196(b), we enter the following new rejection:
Claims 1, 7-13, 17 and 23 are rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly point out and distinctly claim the
subject matter which the applicants regard as the invention.
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