Appeal No. 2002-1250 Page 5
Application No. 09/200,057
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 can 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
inappropriate.
Furthermore, the appellant may use functional language, alternative expressions,
negative limitations, or any style of expression or format of claim which makes clear the
boundaries of the subject matter for which protection is sought. As noted by the Court
in In re Swinehart, 439 F.2d 210, 213-14, 169 USPQ 226, 228-29 (CCPA 1971), a claim
may not be rejected solely because of the type of language used to define the subject
matter for which patent protection is sought.
With this as background, we analyze the specific rejection under 35 U.S.C.
§ 112, second paragraph, made by the examiner of the claims on appeal.
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