Appeal No. 2005-2709 Page 4
Application No. 10/113,648
(i) Claim 17 stands rejected under 35 USC § 103(a) as obvious over Kido
in view of Roitman or the admitted prior art and further in view of Nakaya.
(j) Claim 18 stands rejected under 35 USC § 103(a) as obvious over Kido
in view of Roitman or the admitted prior art and further in view of Xie.
Rather than reiterate the conflicting viewpoints advanced by the Examiner and
the Appellants regarding the above-noted rejections, we make reference to the Answer
(mailed February 10, 2005) for the Examiner's reasoning in support of the rejections,
and to the Brief (filed November 16, 2004) for the Appellants’ arguments there against.
OPINION
Upon careful review of the respective positions advanced by Appellants and the
Examiner, we reverse the rejection under § 112, second paragraph. However, we
affirm the remaining rejections.
§112 Second Paragraph Rejection
Claims 9, 22 and 23 stand finally rejected on the second paragraph of 35 USC
§112 as indefinite.
“The legal standard for definiteness [under the second paragraph of 35 U.S.C.
§ 112] is whether a claim reasonably apprises those of skill in the art of its scope.”
In re Warmerdam, 33 F.3d 1354, 1361, 31 USPQ2d 1754, 1759 (Fed. Cir. 1994). The
inquiry is to determine whether the claim sets out and circumscribes a particular area
with a reasonable degree of precision and particularity. The definiteness of the
Page: Previous 1 2 3 4 5 6 7 8 9 10 Next
Last modified: November 3, 2007