Appeal No. 2001-2656 Page 6
Application No. 09/208,514
It is not clear whether this rejection of claims 1-10 and 20 is under the description
requirement, the enablement requirement, or both. In any event, as we found above,
the claimed “recess defined in a first surface” of the carrying bag is supported by
explanation in the specification, even though the words used in the claim are not
present there. This being the case, and on the basis of analogous reasoning, it is our
view that having understood from the specification and drawings that the claimed
recess corresponds to the disclosed storage compartment 4, one of ordinary skill in the
art clearly would have sufficient information to be enabled to make and use the
invention.
We therefore find that the claimed invention meets the description and
enablement requirements of Section 112, and we will not sustain this rejection.
The Rejection Under The Second Paragraph Of Section 112
It is the examiner’s position that it is unclear as to what the appellant intends as
the “recess defined in a first surface,” and therefore independent claims 1 and 20 and
those claims depending therefrom are indefinite.4 For the reasons expressed above
4The 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.
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