Appeal No. 94-3399
Application 07/871,374
disclosure as it would be interpreted by one having ordinary
skill in the art. In re Kroekel, 504 F.2d 1143, 1146, 183
USPQ 610, 612 (CCPA 1974); In re Moore, 439 F.2d 1232, 1235,
169 USPQ 236, 238-39 (CCPA 1972).
The examiner also improperly urged that having no
antecedent for the particular words in question renders the
claims per se indefinite. See Answer, pages 3 and 8. The
effect of no antecedent basis for the particular words in
claims, however, is dependent on the facts of each case. For
lacking antecedent basis to render claims vague, one of
ordinary skill in the art must not be able to ascertain the
metes and bounds of the claimed subject matter, even when it
is viewed in light of the teachings of the prior art and the
supporting specification. In re Kroekel, supra; In re Moore,
supra. However, the examiner, on this record, does not
allege, much less explain, why having no antecedent for the
particular words in question would have rendered the metes and
bounds of the subject matter of claims 1 through 12
unascertainable by one of ordinary skill in the art.
In view of the foregoing, we are constrained to reverse
the examiner's rejection of claims 1 through 12 procedurally.
9
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 Next
Last modified: November 3, 2007