Appeal No. 95-4589
Application 08/042,888
the second paragraph of § 112 is to basically insure, with a
reasonable degree of particularity, an adequate notification
of the metes and bounds of what is being claimed. See In re
Hammack, 427 F.2d 1378, 1382, 166 USPQ 204, 208 (CCPA 1970).
When viewed in light of this authority, we cannot agree with
the examiner that the metes and bounds of claim 11 cannot be
determined. A degree of reasonableness is necessary. As the
court stated in In re Moore, 439 F.2d 1232, 1235, 169 USPQ
236, 238 (CCPA 1971), the determination of whether the claims
of an application satisfy the requirements of the second
paragraph of Section 112 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.
It is here where the definiteness of language
employed must be analyzed -- not in a vacuum, but
always in light of the teachings of the prior art
and of the particular application disclosure as it
would be interpreted by one possessing the ordinary
level of skill in the pertinent art. [Emphasis ours;
footnote omitted.]
Here, we do not believe that it can seriously be contended
that the artisan, consistent with the appellant’s
specification, would not understand that “said secondary
elements” refers to -- said secondary lighting elements --.
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