Appeal No. 98-2069
Application No. 29/052,369
with a reasonable degree of certainty, a rejection of the
claims under 35 U.S.C. § 112, second paragraph, is
appropriate.
In order to make a rejection, the examiner has the
initial burden to establish a reasonable basis to question
whether the claim sets out and circumscribes a particular area
with a reasonable degree of precision and particularity. That
is, the examiner must provide a reasonable explanation as to
why the scope of protection provided by the claim is not
adequately set forth with a reasonable degree of certainty.
Assuming that sufficient reason for such doubt exists, a
rejection for failing to particularly point out and distinctly
claim the subject matter which the applicant regards as the
invention will be proper on that basis.
Once the examiner has established a reasonable basis to
question the clarity of the claimed invention, the burden
falls on the applicant to present persuasive arguments,
supported by suitable proofs where necessary, that the
designer of ordinary skill in the art would be able to
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