Appeal No. 96-3702
Application 08/208,688
truncated cone 58) and equivalents thereof. Thus, on the face of
it, the “mandrel spreader” recitation in appealed claim 21 is
broader than the “adjusting means” recitation in appealed claim
14, which in turn is broader than the “tapered adjusting means”
recitation in patent claim 14. In other words, appealed claims
14 and 21 seemingly are of broader scope than patent claim 14.
Since the examiner has not advanced any evidentiary basis to
support his determination to the contrary, we shall not sustain
the standing 35 U.S.C. § 251 rejection of claims 1 through 21 as
lacking statutory basis for reissue.
Nor shall we sustain the standing 35 U.S.C. § 112, second
paragraph, rejection of claim 21.
The second paragraph of § 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 this
standard is met, 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. Suffice it to
say that when the “mandrel expansion collar” and “mandrel
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