Appeal No. 96-3407
Application 08/325,549
The claims reciting the following functions lack
recitation of sufficient structures/elements and/or
necessary structural cooperation between the
structures/elements to enable the functions to be
effected: "retains the elongate flexible member
concentrically ... column" (claim 18, lines 18-
20)(it is not clear how the top or bottom plate can
perform the recited function), "extends ... through
the second access hole" (claim 22, line 3)(it is not
clear how the second hole is positioned relative to
the cavity).
In claim 18, line 7, "for freely resting"
appears to be an incomplete phrase. [Pages 3 and
4.]
We do not agree with the examiner’s position. The legal
standard for indefiniteness is whether a claim reasonably
apprises those of skill in the art of its scope. In re
Warmerdam, 33 F.3d 1354, 1361, 31 USPQ2d 1754, 1759 (Fed. Cir.
1994). The examiner, however, has not even alleged that one
of ordinary skill in this art would not be reasonably be
apprised of the scope of these claims. Instead, the
examiner’s position is apparently bottomed on the notion that
insufficient structure has been recited to produce the results
set forth in recitations of the various functions that the
claimed structure is capable of performing. Such a 3
3There is nothing intrinsically wrong in defining
something by what it does rather than what it is. In re
5
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