Appeal No. 2006-3241
Application No. 10/834,332
Claims 1-18 stand rejected under 35 U.S.C. ' 112, second paragraph, as being
indefinite.
Claims 1-4, 13, 17, and 18 stand rejected under 35 U.S.C. ' 103 as being
unpatentable over Wickersheim, Tricoire, Urbach, and Kolodner.
We refer to the Rejection (mailed Sep. 28, 2005) and the Examiner=s Answer
(mailed Jun. 16, 2006) for a statement of the examiner=s position and to the Brief (filed
Apr. 12, 2006) and the Reply Brief (filed Aug. 15, 2006) for appellant=s position with
respect to the claims which stand rejected.
OPINION
The function of claims is (1) to point out what the invention is in such a way as to
distinguish it from the prior art; and (2) to define the scope of protection afforded by the
patent. In re Vamco Mach., Inc., 752 F.2d 1564, 1577 n.5, 224 USPQ 617, 635 n.5
(Fed. Cir. 1985). The legal standard for definiteness 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 merely to determine whether the
claims do, in fact, set out and circumscribe a particular area with a reasonable degree of
precision and particularity. In re Moore, 439 F.2d 1232, 1235, 169 USPQ 236, 238
(CCPA 1971). The definiteness of the language employed must be analyzed -- not in a
vacuum, but in light of the teachings of the prior art and of the particular application
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