Appeal No. 97-2227
Application 08/254,978
insure, with a reasonable degree of particularity, an adequate
notification of the metes and bounds of what is being claimed.
See In re Hammack, 427 F.2d 1378, 1382, 166 USPQ 204, 208
(CCPA 1970). When viewed in light of this authority, we
cannot agree with the examiner that the metes and bounds of
claims 1-9, 12 and 13 cannot be determined for the reasons
noted by the examiner. A degree of reasonableness is
necessary. As the court stated in In re Moore, 439 F.2d 1232,
1235, 169 USPQ 236, 238 (CCPA 1971), the determination of
whether the claims of an application satisfy the requirements
of the second paragraph of § 112 is
merely to determine whether the claims do, in fact,
set out and circumscribe a particular area with a
reason-able degree of precision and particularity.
It is here where the definiteness of language
employed must be
analyzed -- not in a vacuum, but always in 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
pertinent art. [Emphasis ours; footnote omitted.]
As to the position set forth in the supplemental answer,
the examiner has treated the “secondary shaft 54" as an
entirely separate element from the claimed central drive
6
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007