Appeal No. 96-0113
Application 07/848,779
The indefiniteness rejection of
claims 2-4, 12-14, and 18 under
35 U.S.C. § 112, second paragraph
Holding that a claim is unpatentable for indefiniteness
under 35 U.S.C. § 112, second paragraph, requires a determination
that one with ordinary skill in the art would not understand the
scope of what is being claimed. See, e.g., Amgen Inc. v. Chugai
Pharmaceutical Co. Ltd., 927 F.2d 1200, 1217, 18 USPQ2d 1016,
1030 (Fed. Cir. 1991). A claim needs to "reasonably apprise"
those skilled in the art as to the scope of what is claimed.
See, e.g., Shatterproof Glass Corp. v. Libbey-Owens Ford Co.,
758 F.2d 613, 624, 225 USPQ 634, 641 (Fed. Cir. 1985). More
importantly, the breadth of a claim is an entirely different
issue from indefiniteness. In re Miller, 441 F.2d 689, 693, 169
USPQ 597, 600 (CCPA 1971); In re Gardner, 427 F.2d 786, 166 USPQ
138 (CCPA 1970). Breadth does not equate to indefiniteness.
E.g., In re Borkowski, 422 F.2d 904, 909, 164 USPQ 642, 646
(CCPA 1970).
In this case, the examiner erred by equating breadth with
indefiniteness. As to claims 2-4 and 12-14, the examiner's
position is stated as follows (answer at 3):
Claims 2-4 and 12-14 recite "a combinatorial
minimization technique", "stochastic annealing" and "a
genetic algorithm" respectively. However, the claims
fail to clearly define such limitations in the claims.
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