Appeal No. 96-0122
Application No. 08/096,581
that the claims “are indefinite and incomplete because they do
not recite the critical formulae disclosed in the specification”
(Answer, page 4).
Appellant argues that it is permissible to broadly claim the
method and apparatus without the limitations of the particular
formulae (Brief, pages 2 and 4), and that:
While the specification only recites one
winding/extracting procedure and one set of formulae to
use with the winding/extracting procedure, Appellant
submits that Appellant is not limited to claiming only
the described winding/extracting procedure along with
the disclosed formulae. Rather, Appellant is permitted
to claim the procedure alone if the disclosed procedure
by itself is patentably distinct from the prior art.
As indicated supra, appellant’s decision to not include the
formulae for calculating the playing times in the claims has led
to rejections under the first and the second paragraphs of
35 U.S.C. § 112.
As a lexicographer, appellant may choose the language of the
claims. On the other hand, the language chosen for the claims
must set out and circumscribe a particular area with a reasonable
degree of precision and particularity when read in light of the
application disclosure as they would be by one possessing
ordinary skill in the art. See In re Moore, 439 F.2d 1232, 1235,
169 USPQ 236, 238 (CCPA 1971).
4
Page: Previous 1 2 3 4 5 6 7 8 9 Next
Last modified: November 3, 2007