Appeal No. 2003-1844 Page 4
Application No. 09/643,130
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 cannot 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 appropriate.
Furthermore, appellants 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 now turn to the specific rejection under 35 U.S.C.
§ 112, second paragraph, made by the examiner. In this rejection (answer, p. 3), the
examiner stated that the phrase "may be reproduced" as utilized in independent claims
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