Appeal No. 95-2576
Application 07/962,952
reviewing court points out that a claim which is of such breadth
that it reads on subject matter disclosed in the prior art is
rejected under 35 U.S.C. § 102 rather than under 35 U.S.C. § 112,
second paragraph. See In re Hyatt, 708 F.2d 712, 715, 218 USPQ
195, 197 (Fed. Cir. 1983) and In re Borkowski, 422 F.2d 904, 909,
164 USPQ 642, 645-46 (CCPA 1970).
On pages 4 and 5 of the answer, the Examiner argues that the
term "capable" in Appellants’ claims 3, 6 and 12 should be
avoided because it is not clear whether or not anything happens.
We note that claims 3, 6 and 12 recite "predetermining from known
electronic device characteristics a shortest channel length
capable of receiving said maximum voltage." On pages 8 and 9 of
the specification, Appellants disclose the selection step which
determines the maximum voltage to be applied to a device under
test. Appellants disclose that the voltage is determined based
upon the maximum voltage that the shortest channel length is
capable of receiving without damage to the device. In light of
the teachings of the disclosure as it would be interpreted by one
possessing ordinary skill in the art, we find that the language
"predetermining from known electronic device characteristics a
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