Appeal No. 96-1246
Applicaton No. 08/205,812
definiteness of the language must be analyzed, not in a
vacuum, but always in light of teachings of the disclosure as
it would be interpreted by one possessing ordinary skill in
the art. In re Johnson, 558 F.2d 1008, 1015, 194 USPQ 187,
193 (CCPA 1977), citing In re Moore, 439 F. 2d 1232, 1235, 169
USPQ 236, 238 (1971). Furthermore, our 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 page 4 of the answer, the Examiner states that claim
19 is indefinite because it is not clear what is meant by the
claimed limitation, "the multiplication to apply a five pole
digital filter to the one or more digital signals."
Appellants argue on page 12 of the brief that the language
particularly points out and distinctly claims the Appellants'
invention when read in light of Appellants' specification.
8
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 Next
Last modified: November 3, 2007