Appeal 2007-0113
Application 10/353,776
1967). The rejection of claims 2-7 based on the doctrine of res judicata is
reversed.
The indefiniteness rejection
The test for definiteness under 35 U.S.C. § 112, second paragraph, is
whether “those skilled in the art would understand what is claimed when the
claim is read in light of the specification.” Orthokinetics, Inc. v. Safety
Travel Chairs, Inc., 806 F.2d 1565, 1576, 1 USPQ2d 1081, 1088 (Fed. Cir.
1986) (citations omitted). A claim may be invalid for indefiniteness if it is
“insolubly ambiguous” and not “amenable to construction.” Exxon Research
& Eng'g Co. v. United States, 265 F.3d 1371, 1375, 60 USPQ2d 1272, 1276
(Fed. Cir. 2001).
The Examiner argues that the claims are vague and indefinite because
neither the claims nor the Specification specifies the actual numerical values
of ρ, U, and t or defines by how much t is less than T (Answer 9). The
Examiner further points out that there are an infinite number of
combinations that could yield the formation number F as claimed and
disclosed. Id. Each of these matters simply illustrates the breadth of claims
2-7. Just because a claim is broad does not mean that it is indefinite. See In
re Johnson, 558 F.2d 1008, 1016 n.17, 194 USPQ 187, 194 n.17 (CCPA
1977); In re Miller, 441 F.2d 689, 693, 169 USPQ 597, 600 (CCPA 1971);
In re Gardner, 427 F.2d 786, 788, 166 USPQ 138, 140 (CCPA 1970). The
Examiner has not cogently explained how these aspects of the claims render
the claims “insolubly ambiguous” and not “amenable to construction” so as
to justify a holding of indefiniteness.
The Examiner further contends that it is not clear what is meant by
“when the fluid flow across the nozzle orifice is substantially uniform,” as
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