Appeal No. 95-4959
Application 08/145,722
We consider first the rejection of claims 6-10 as not being in compliance with the second
paragraph of 35 U.S.C. § 112. According to the examiner, the phrases “a cross-sectional area” and
“said cross-sectional area” are not clear because such terms usually imply a vertical cross section
whereas the cross section in appellants’ invention is clearly in the horizontal direction [answer, page 3].
Appellants respond that the rejection is improper because the subject matter embraced by the claims is
clear [brief, page 4; reply brief, page 3].
A claim must set out and circumscribe a particular area with a reasonable degree of precision and
particularity when read in light of the disclosure as it would be by the artisan. In re Moore, 439 F.2d
1232, 1235, 169 USPQ 236, 238 (CCPA 1971); In re Johnson, 558 F.2d 1008, 1015, 194 USPQ
187, 193 (CCPA 1977). Acceptability of the claim language depends on whether one of ordinary skill
in the art would understand what is claimed in light of the specification. Seattle Box Co., v. Industrial
Crating & Packing, Inc., 731 F.2d 818, 826, 221 USPQ 568, 574 (Fed. Cir. 1984).
When the claims are considered in light of the specification, the direction in which the cross section
of claims 6-10 is taken would be clearly apparent to the artisan. In fact, the examiner recognizes the
cross-sectional direction recited in these claims, but the examiner believes that a cross section should be
taken only in the vertical direction. We see no reason why the clearly recited claimed cross section of
the device, which clearly is taken between layers of the device, does not appropriately apprise those
persons skilled in the art of the scope of the claimed invention. Since the scope of the subject matter
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