Appeal No. 96-0831
Application 08/191,113
OPINION
In reaching our decision on the issues raised in this
appeal, we have carefully assessed the claims, the prior art
applied against the claims, and the respective views of the
examiner and the appellant as set forth in the Answer and the
Brief.
At the outset, we wish to confirm the examiner’s opinion
that the first three issues set forth on page 7 of the Brief are
petitionable subject matter under 37 C.F.R. 1.181 and are not
appealable.
The Rejection Under 35 U.S.C. § 112, Second Paragraph
The examiner has set forth a number of instances of alleged
indefiniteness in claims 1, 4 and 5. In evaluating these issues,
we recognize that the second paragraph of Section 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 the 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
3
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 Next
Last modified: November 3, 2007