Appeal No. 96-2179 Page 22
Application 07/613,466
control", and "self-adapt" in these claims is unclear.
(Paper 22 at 4.) According to the examiner, these terms are
not objectionable in themselves, but are unclear as argued.
(Paper 22 at 12-13.) While an applicant's statements in the
prosecution history are relevant to the meaning of a term,
Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582,
39 USPQ2d 1573, 1576 (Fed. Cir. 1996), such statements do not
outweigh the effect of the disclosure and objective evidence
of record. The test for indefiniteness is objective, based on
the understanding of a hypothetical person of ordinary skill.
Appellants' subjective intent to claim, even claim badly, does
not control the meaning of a term in the claim. If Appellants
have used these terms inconsistently during prosecution to
avoid prior art-based rejections, these inconsistencies are
better treated in the context of those prior-art rejections.
Consequently, we reverse the indefiniteness rejection for the
remaining claims.
C. Enablement
9. The enablement rejection is similarly based on a
dispute over the meaning of the term "closed loop". As we
have already indicated, on this record this dispute is better
resolved in light of the prior-art rejections. Moreover, we
are reluctant to read faults into the claims based on
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