Appeal No. 96-4022
Application 08/197,011
305 F.2d 859, 862-63, 134 USPQ 292, 295-96 (CCPA 1962) and In re
Wilson, 424 F.2d 1382, 1385, 165 USPQ 494, 496 (CCPA 1970)), we
are constrained to reverse the examiner's rejections of claims 2,
9, 10, 16-21 and 23 under 35 U.S.C. § 102(b) and claims 3-7 and
11-15 under 35 U.S.C. § 103 based on the reference to Warren.
We hasten to add that this is a procedural reversal, rather than
one based upon the merits of the §§ 102(b) and 103 rejections.
Under the provisions of 37 CFR § 1.196(b) we make the
following new rejections.
Claims 2-7, 9-21 and 23 are rejected under 35 U.S.C. § 112,
second paragraph. Initially we note that the legal standard for
indefiniteness is whether a claim reasonably apprises those of
skill in the art of its scope. In re Warmerdam, 33 F.3d 1354,
1361, 31 USPQ2d 1754, 1759 (Fed. Cir. 1994). In making this
determination claim language, even though understandable when
read in abstract, cannot be read apart from and independent of
the supporting disclosure on which it is based. See In re Cohn,
438 F.2d 989, 993, 169 USPQ 95, 98 (CCPA 1971). Additionally, in
order to satisfy the second paragraph of § 112, a claim must
accurately define the invention in the technical sense. See In
re Knowlton, 481 F.2d 1357, 1366, 178 USPQ 486, 492-93 (CCPA
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