Appeal No. 95-4028
Application 08/097,904
the timing of testing, the entire focus of one-half of
the Examiner's arguments regarding claim 14, are
irrelevant to any language found in claim 14 or its
dependent claims.
Thus, just as in claim 1, in claim 14, which is
free of the language that confused the Examiner, a
definitive structural relationship between the end
surface of the resin package and each testing wire
conductor is described that exists whether insulating
means or another object covers or electrically
insulates those second ends of the testing wire
conductors. This structural relationship is so plain
and simple that the rejection of the claims as
indefinite is nearly incredible.
When claim 1 is read in light of the application
disclosure, we agree with the appellant that "even when the2
insulating means, the sheet 17 in Figure 3, is in place, the
testing wire conductors are still exposed at the second surface
of the circuit board" (Brief, page 6). On the other hand, the
testing wire conductors when covered by the insulating means are
not exposed "for testing the respective functions of said
electronic circuit individually" as required by claim 1. Thus,
we agree with the examiner's position that "the testing wires
could not be tested if they were insulated" (Answer, page 5).
2Any analysis under § 112 should begin with a determination
of whether the claims do, in fact, set out and circumscribe a
particular area with a reasonable degree of precision and
particularity when read in light of the application disclosure as
they would be by one possessing ordinary skill in the art. See
In re Moore, 439 F.2d 1232, 1235, 169 USPQ 236, 238 (CCPA 1971).
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