Appeal No. 2003-0208 Page 8
Application No. 08/578,996
The indefiniteness rejection
We will not sustain the rejection of claims 3, 6, 8 and 10 under 35 U.S.C. § 112,
second paragraph.
Claims are considered to be definite, as required by the second paragraph of
35 U.S.C. § 112, when they define the metes and bounds of a claimed invention with a
reasonable degree of precision and particularity. See In re Venezia, 530 F.2d 956, 958,
189 USPQ 149, 151 (CCPA 1976).
The examiner's rejection (answer, p. 4) is that in view of the 35 U.S.C. § 112, first
paragraph, rejection, the recitation of the intercrystal grain boundary is vague and
indefinite.
In view of the fact the examiner has not explained why the metes and bounds of
the claimed invention would not be understood with a reasonable degree of precision
and particularity and our reversal of the examiner's rejection under 35 U.S.C. § 112,
first paragraph, the decision of the examiner to reject claims 3, 6, 8 and 10 under
35 U.S.C. § 112, second paragraph, is reversed.
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