Appeal No. 2005-1349 Page 4
Application No. 10/079,686
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 can 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
inappropriate.
Thus, the failure to provide explicit antecedent basis for terms does not always
render a claim indefinite. As stated above, if the scope of a claim would be reasonably
ascertainable by those skilled in the art, then the claim is not indefinite. See Ex parte
Porter, 25 USPQ2d 1144, 1146 (Bd. Pat. App. & Int. 1992).
Furthermore, the 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
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