Appeal No. 96-2692
Application 08/310,892
ever, we will not sustain the rejection of claims 1, 7 and 15
under
35 U.S.C. § 103.
Analysis of 35 U.S.C. § 112, second paragraph,
should begin with the determination of whether claims set out
and circumscribe the particular area with a reasonable degree
of precision and particularity; it is here where definiteness
of the language must be analyzed, not in a vacuum, but always
in light of teachings of the disclosure as it would be inter-
preted 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
(CCPA 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).
5
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 Next
Last modified: November 3, 2007