Appeal No. 2003-1303 3
Application No. 09/351,166
to in the terminology “eliminating influences of mechanical play due to structures of the
adjacent cylinder prior to drilling” appearing in claim 1, and the similar terminology
appearing in the other independent claims on appeal. Second, it is not clear to the
examiner how “the at least one support member” (emphasis added) can be coupled to
the cylinder to be drilled as called for in claim 2, and also coupled to the adjacent
cylinder as set forth in claim 1 from which claim 2 depends. Third, it is not clear to the
examiner how the support member can be pressed against the surface of the cylinder
to be drilled, as required by claim 3 and several other claims. Fourth, it is not clear to
the examiner what is meant by the term “radially movable” in claims 6 and 8.
The test for compliance with the second paragraph of § 112 is “whether the claim
language, when read by a person of ordinary skill in the art in light of the specification,
describes the subject matter with sufficient precision that the bounds of the claimed
subject matter are distinct.” In re Merat, 519 F.2d 1390, 1396, 186 USPQ 471, 476
(CCPA 1975). In other words, does a claim reasonably apprise those of skill in the art
of its scope. In re Warmerdam, 33 F.3d 1354, 1361, 31 USPQ2d 1754, 1759 (Fed. Cir.
1994).
Concerning the examiner’s first reason for rejecting the claims under 35 U.S.C. §
112, second paragraph, we note the following statement appearing in appellants’
specification in the paragraph spanning pages 9 and 10:
Framework 2 can be provided with support members 29, e.g.,
pneumatic cylinders, which, prior to the machining operation, can be
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