Appeal No. 2001-0421
Application 08/926,835
the majority’s belief, the test for determining compliance with
the second paragraph of section 112 is not whether the examiner
and the appellants agree or disagree in their interpretation of
the appealed claims. Instead, the test is whether the claims, as
interpreted by one possessing the ordinary level of skill in the
art, 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). Moreover, this
disagreement in claim interpretation between the examiner and the
appellants is the raison d’etre of the appeal under
consideration. Therefore, it is an illogic of oxymoronic
character for the majority to believe that this disagreement
supports its refusal to consider the appeal.
I am also troubled by the fact that a substantial portion of
the majority opinion is devoted to criticism of the manner in
which the appellants and the examiner have prosecuted this
application. As with all appeals, the prosecution history of
this application, at least from the hindsight provided by
appellate review, may be regarded as falling short of achieving a
thorough crystallization and briefing of all issues engendered by
the appeal. Nevertheless, any such imperfection in the
prosecution history does not, in and of itself, support the
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