Appeal No. 96-2865
Application No. 08/081,561
rejection of claims 1 through 41, the examiner has set forth a
number of reasons why claims 1 through 31 and 33 through 41 are
indefinite including unclear and confusing claim language,
improper Markush groupings, and improper claim dependencies (see
pages 5 through 8 in the answer).
The second paragraph of 35 U.S.C. § 112 requires claims to
set out and circumscribe a particular area with a reasonable
degree of precision and particularity. In re Johnson, 558 F.2d
1008, 1015, 194 USPQ 187, 193 (CCPA 1977). In determining
whether the claims meet this standard, the definiteness of the
language employed in the claims 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. Id.
Notwithstanding the position taken by the examiner, claims 1
through 31 and 33 through 41 do indeed set out and circumscribe a
particular area with a reasonable degree of precision and
particularity when they are read in light of the underlying
disclosure. Moreover, these claims do not contain any improper
Markush groupings or claim dependencies.
Therefore, we shall not sustain the standing 35 U.S.C.
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