Appeal No. 2005-0821
Application No. 09/960,356
current flowing through said PN junction, on said semiconductor
substrate in a region other than the region where said neutrons
are detected.
Claims 3 and 5 stand rejected under 35 U.S.C. § 112, first
paragraph, for lack of enabling disclosure (Answer, page 3) and
under the second paragraph since the scope of the claims is
“unclear” (id.). We reverse both grounds of rejection on appeal
essentially for the reasons stated in the Brief, Reply Brief, and
those reasons set forth below.
OPINION
A. The Rejection under § 112, ¶2
A proper analysis of the claim language requires
ascertaining if the claims are definite under the second
paragraph of section 112 before an analysis of the claims under
the first paragraph of section 112 can be undertaken. See In re
Angstadt, 537 F.2d 498, 501, 190 USPQ 214, 217 (CCPA 1976).
The initial burden of establishing unpatentability, on any
ground, rests with the examiner. See In re Oetiker, 977 F.2d
1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). “The legal
standard for definiteness is whether a claim reasonably apprises
those of skill in the art of its scope. [Citations omitted].” In
re Warmerdam, 33 F.3d 1354, 1361, 31 USPQ2d 1754, 1759 (Fed. Cir.
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