Ex parte THOMAS J. GREENBOWE et al. - Page 7




          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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